Madrid Protocol US Refusal Response Strategy
Madrid-based US applications often face US-specific issues even when the international registration is valid. Responses must fit Section 66(a) limits and USPTO practice.
For Madrid applicants who received a provisional refusal from the USPTO.
Section 66(a) Limits
Goods and services usually cannot be broadened beyond the international registration. Some amendments available in ordinary US applications may be limited in Madrid cases.
Common US Refusals
Madrid applications frequently receive identification requirements, translation/transliteration requirements, disclaimers, Section 2(d) refusals, descriptiveness refusals, or specimen-free prosecution issues that later affect maintenance.
Common Questions
Can a Madrid US application be converted to a 1(a) or 1(b) basis?
Basis changes in Madrid applications are limited. Strategy should be checked against Section 66(a) rules before responding.
Does a Madrid registration avoid US maintenance use requirements?
No. US maintenance filings still require use in US commerce or an acceptable excuse for nonuse.