Extending Your International Registration to the United States
Brands from Europe, Latin America, and Asia designate the United States in about 25,000 Madrid applications a year. The USPTO examines each one as strictly as a domestic application, and any refusal must be answered by a U.S.-licensed attorney. We act as U.S. counsel for foreign brand owners and their home-country trademark firms, from the first provisional refusal through registration and the declarations that keep it in force.
From your home registration to U.S. protection
A foreign brand owner with a home-country application or registration can extend it to the United States by designating the U.S. in a Madrid international application, or later in a subsequent designation. WIPO forwards the designation to the USPTO, which treats it as a U.S. application under Section 66(a).
From there, the USPTO applies U.S. law in full. An examining attorney reviews the mark for conflicts with earlier U.S. registrations, descriptiveness, and the wording of the goods and services. If the mark is approved, it is published for opposition and then registered as an extension of protection, with the same legal effect as any other U.S. registration.
Why a U.S. attorney is required
Since August 3, 2019, every applicant or registrant domiciled outside the United States must be represented before the USPTO by an attorney licensed in a U.S. state. The rule applies to Madrid designations as soon as a provisional refusal, an opposition, or any other filing requires a response. Foreign trademark firms cannot respond on their own, and the USPTO will not accept a response filed directly by a foreign holder.
Foreign Trademark Counsel · Latin American Brands · European Brands
- Home filingAn application or registration in the holder's home office.
- Designate the U.S.In the international application or a subsequent designation, with a declaration of intent to use.
- WIPO notifies USPTOThe USPTO receives the request for extension of protection.
- ExaminationUnder U.S. law. Any problem triggers a provisional refusal sent through WIPO.
- Publication30-day opposition period in the USPTO Official Gazette.
- RegistrationExtension of protection issues. Section 71 declarations follow.
Top ten countries designating the United States through Madrid
Madrid applications designating the U.S., by applicant's country of origin. European brands lead, with Germany, the UK, France, Italy, Switzerland, and Spain accounting for more than four in ten.
Applications designating the U.S., by origin, 2024
The ten largest sources of Madrid filings at the USPTO.
View data table
| Origin | 2020 | 2022 | 2024 | Share 2024 |
|---|---|---|---|---|
| Germany | 3,172 | 3,259 | 2,785 | 11.1% |
| United Kingdom | 2,528 | 2,739 | 2,444 | 9.7% |
| China | 2,262 | 1,918 | 2,252 | 9.0% |
| Japan | 1,836 | 1,898 | 1,843 | 7.3% |
| France | 1,594 | 1,911 | 1,738 | 6.9% |
| Italy | 1,665 | 1,688 | 1,629 | 6.5% |
| Republic of Korea | 1,019 | 1,460 | 1,553 | 6.2% |
| Switzerland | 1,522 | 1,642 | 1,478 | 5.9% |
| Australia | 1,513 | 1,577 | 1,300 | 5.2% |
| Spain | 703 | 834 | 837 | 3.3% |
| All origins | 24,984 | 27,117 | 25,118 | 100% |
Source: WIPO IP Statistics Data Center, trademark indicator "Applications via the Madrid system," USPTO by applicant's origin (database updated May 2026; 2024 is the latest year).1 China's filings at the USPTO arrive mostly through direct applications; Madrid is a small share of its U.S. activity.
Latin America and the U.S.: a large market, a small Madrid footprint
The United States is the top foreign destination for trademark filings from Mexico, Brazil, and Colombia. Yet Latin American brands use Madrid for only a small share of their foreign filings, and most of the region's largest economies outside Brazil, Mexico, Colombia, and Chile are not Madrid members at all.
Madrid applications designating the U.S. from Latin America and the Caribbean
Yearly totals, with Brazil, Mexico, and Colombia as the leading sources.
View data table
| Origin | 2020 | 2021 | 2022 | 2023 | 2024 |
|---|---|---|---|---|---|
| Brazil | 65 | 82 | 84 | 102 | 122 |
| Mexico | 42 | 73 | 62 | 63 | 54 |
| Colombia | 25 | 44 | 68 | 51 | 34 |
| Chile | 0 | 3 | 7 | 19 | 16 |
| Caribbean and other | 8 | 16 | 7 | 10 | 12 |
| Total | 140 | 218 | 228 | 245 | 238 |
Source: WIPO IP Statistics Data Center.1 "Caribbean and other" includes Trinidad and Tobago, Belize, Curaçao, Antigua and Barbuda, Cuba, Barbados, Panama, Peru, Argentina, Ecuador, and others with fewer than 6 a year; applicants from non-member countries can use Madrid only through an establishment or domicile in a member.
Key Latin American metrics
Share of foreign trademark filings made through Madrid
Most Latin American brands still file abroad country by country.
Germany shown for comparison. Sources: WIPO IP Statistical Country Profiles 2024 (updated June 2026); WIPO Madrid Yearly Review 2026.2, 3
Brands based in Argentina, Peru, Venezuela, Uruguay, Ecuador, Panama, Costa Rica, and Guatemala cannot use Madrid from home. They enter the U.S. through a direct USPTO application under Section 1 or Section 44. See Federal Trademark Applications.
A Madrid designation compared with a direct U.S. application
Foreign brand owners can enter the U.S. through Madrid or by filing directly with the USPTO. The rules differ in ways that matter for descriptive marks, goods descriptions, and long-term maintenance.
| Madrid designationSection 66(a) · 15 U.S.C. § 1141f | Direct U.S. applicationSection 1 or 44 · filed at the USPTO | |
|---|---|---|
| Government fee | CHF 460 per class, paid to WIPO (the USPTO's $600) | $350 per class, plus surcharges for free-form wording |
| Intent to use | A signed declaration of bona fide intention to use the mark in U.S. commerce (WIPO form MM18) is required. | A verified statement of use or bona fide intent, under the chosen basis. |
| Use before registration | Not required. The mark can register without any U.S. sales. | Required for Section 1 filings; not required for Section 44(e). |
| Goods and services | Must meet U.S. definiteness rules. The WIPO classification is fixed: goods placed in the wrong class must be deleted, not moved. | Drafted to U.S. standards from the start. Misclassified goods can be moved to the correct class. |
| Descriptive marks | No Supplemental Register. A mark refused as descriptive must be argued or proven distinctive, or it is refused. | Can be amended to the Supplemental Register, which still allows the ® and enforcement. |
| Office action response | Six months, through a U.S.-licensed attorney. | Three months, extendable once by three months for $125. |
| Dependency | Five years on the home-country basic mark. If it falls, the U.S. protection falls with it, though it can be transformed into a U.S. application within three months. | Independent of any foreign filing once registered. |
| Maintenance | Section 71 declarations of use, years 5–6 and every 10 years, filed at the USPTO. Renewal through WIPO. | Section 8 declarations and Section 9 renewals, both at the USPTO. |
| Best suited for | Brands already using Madrid for several countries, with a distinctive mark and a goods list that fits U.S. practice. | Descriptive or borderline marks, brands from non-member countries, and filings where broad U.S. coverage matters. |
◆ marks rows where the two routes differ most. U.S. individual fee per WIPO Information Notice No. 21/2026; USPTO response periods per the USPTO's 2022 examination guide, which kept the longer period for Section 66(a) filings.4, 5
Top five mistakes foreign brands make entering the U.S. through Madrid
These are the problems we see most often when European, Latin American, and Asian brands extend their registrations to the United States.
Using home-country goods descriptions
Broad class headings and general terms accepted in Europe and Latin America, such as "computer software" or "services of a retail store," are too vague for the USPTO. The examiner requires more specific wording, and because the WIPO classification is fixed, goods that belong in another class are lost rather than moved.
Indefinite identificationHave a U.S. attorney review the goods list before designating the U.S. Where the home filing is broad, consider a tailored list for the U.S. or a direct U.S. application.
Designating a mark the USPTO will see as descriptive
A word that describes the product in Spanish, Portuguese, French, German, or Italian is translated and treated as descriptive under the doctrine of foreign equivalents. Madrid designations cannot move to the Supplemental Register, so the refusal often ends the U.S. designation.
§ 2(e)(1) · foreign equivalentsHave the mark assessed under U.S. standards before designating. For descriptive or borderline marks, a direct U.S. application keeps the Supplemental Register available.
Skipping a U.S. clearance search
A clean home-country register says nothing about earlier U.S. registrations and the common-law rights of American businesses. Many U.S. refusals cite marks that a U.S. search would have shown, and some designations draw oppositions or infringement claims after registration.
Likelihood of confusion · § 2(d)Run a U.S. clearance search, including state and common-law sources, before the U.S. is designated. It costs far less than an opposition or a rebrand.
Letting a provisional refusal sit
USPTO refusals reach the holder through WIPO and the home-country firm, which loses time. Only a U.S.-licensed attorney can respond, and a missed deadline abandons the U.S. designation, with no Supplemental Register or extension fee to fall back on.
AbandonmentSend every USPTO refusal to U.S. counsel the day it arrives. Appointing U.S. counsel before the refusal issues saves weeks.
Registering without real plans to sell in the U.S.
A Madrid designation can register with no U.S. use, but the Section 71 declaration due between years 5 and 6 requires proof of use in U.S. commerce for every listed item. Three years of non-use is evidence of abandonment, and a weak intent-to-use record invites challenges from competitors.
Section 71 · non-useKeep records of U.S. launch plans, start genuine U.S. sales, and limit the goods list to what you will sell. Record the registration with U.S. Customs and Amazon Brand Registry once it issues.
Frequently asked questions
Do I need a U.S. attorney for a Madrid designation of the U.S.?
Yes, if your domicile is outside the United States and the USPTO issues a provisional refusal, an opposition is filed, or any other response is needed. Your home-country firm cannot file it. Many foreign firms appoint us before a refusal issues so deadlines are not lost in transit.
How much does it cost to designate the United States?
The U.S. individual fee is CHF 460 per class, paid to WIPO with the international application or subsequent designation, since April 12, 2026. Attorney fees for any refusal response are separate.
How long does the USPTO take?
The USPTO reviews Madrid designations on the same schedule as domestic applications, with a first action averaging about four and a half months in the first half of FY 2026. Under the Madrid Protocol, the USPTO must notify any refusal within 18 months of WIPO's notification.
Do I have to use the mark in the U.S. before it registers?
No. A Madrid designation can register on your declared intent to use. But a Section 71 declaration showing use in U.S. commerce is due between the fifth and sixth years after registration, and every ten years after that.
What is the deadline to respond to a USPTO refusal?
Six months from the date of the office action for a Madrid designation. The response must be filed by a U.S.-licensed attorney for foreign-domiciled holders.
Can I move my mark to the Supplemental Register if it is refused as descriptive?
No. That option is not available for Madrid designations. The choices are to argue the refusal, prove acquired distinctiveness, or file a new direct U.S. application that can be amended to the Supplemental Register.
What happens if my home-country registration is cancelled?
If it happens within five years of the international registration date, the U.S. protection is cancelled too. Within three months, you can transform the U.S. designation into a direct U.S. application that keeps the original date.
Should I designate the U.S. through Madrid or file directly?
Madrid is usually efficient when you are already filing in several countries and your mark and goods list suit U.S. practice. A direct application is often better for descriptive marks, broad goods coverage, or brands from non-member countries. See our Federal Trademark Applications page for the direct route.
Send us your USPTO provisional refusal
Send the refusal, the international registration number, and the response deadline. We will review the refusal, explain the options and likely cost, and confirm conflicts before any substantive work begins.
- U.S. attorney of record for Madrid designations
- Responses to USPTO provisional refusals and oppositions
- U.S. clearance before designating the United States
- Section 71 declarations, CBP recordation, and Amazon Brand Registry