Filing a U.S. Trademark Application on a Section 66(a) Basis: A Complete Guide for Madrid Protocol Applicants

International brand protection is no longer a luxury for globally-minded businesses – it’s a necessity. If you’re a trademark owner outside the United States, the Madrid Protocol offers a streamlined way to seek protection in multiple countries using a single application. In the U.S., such an international application is known as a Section 66(a) application under the U.S. Trademark Act, or Lanham Act.
This guide explores what Section 66(a) is, when and how to use it, the benefits and limitations, and how to respond to Office Actions or convert a Madrid Protocol filing into a direct U.S. application if necessary.
1. What Is a Section 66(a) Trademark Application?
Section 66(a) refers to the provision of the Lanham Act that allows foreign applicants to extend protection to the United States via the Madrid Protocol, an international treaty administered by the World Intellectual Property Organization (WIPO).
To file a Section 66(a) application, you must already have a pending or registered “basic application” or “basic registration” in your home country (called the “Office of Origin”), and then file an international application through WIPO designating one or more Madrid Protocol member countries—including the United States.
2. Who Can File a Section 66(a) Application?
You may use Section 66(a) if:
- You are a national, domiciliary, or entity of a Madrid Protocol member country; and
- You have a valid home trademark application or registration (your “basic mark”) filed through that country’s IP office; and
- You have filed an international registration (IR) with WIPO that designates the U.S.
Only WIPO transmits Section 66(a) applications to the United States Patent and Trademark Office (USPTO). You cannot file a Section 66(a) application directly with the USPTO.
3. How the Process Works: Step-by-Step Overview
Filing a U.S. trademark application on a Section 66(a) basis involves several key stages—some handled through your home country’s trademark office and WIPO, and others through the USPTO. Though the process is designed to simplify international trademark protection under the Madrid Protocol, each stage must be navigated carefully to avoid delays or rejection.
Here’s a step-by-step breakdown of the process:
Step 1: File a Basic Application or Registration in Your Home Country
The Madrid Protocol requires that you first file or register a trademark in your country of origin, known as the Office of Origin. This application or registration is referred to as your “basic application” and it serves as the foundation for the international registration.
Key points:
- The Office of Origin must be in a country that is a member of the Madrid Protocol.
- The basic app must cover the goods and services you intend to protect internationally.
- You cannot file an international application without first filing the basic app.
Practical Tip: Ensure your basic mark is strong, clearly worded, and defensible. If it is refused, canceled, or limited in the first five years, the entire international registration, including the U.S. designation, may collapse under a central attack (described below).
Step 2: File an International Application with WIPO
Once the basic application is filed, you submit an international application through your Office of Origin (e.g., EUIPO, JPO, UKIPO), designating the countries where you are going to seek protection, such as the United States.
The international application must:
- Be filed in one of WIPO’s official languages (English, French, or Spanish);
- Use the Nice Classification system to group goods and services;
- Match the scope of the basic application. No broader identifications are allowed; and
- Include payment of fees based on the number of designated countries and classes.
Your Office of Origin will conduct a formality check and then forward the application to WIPO. The fees involved in the international application can vary widely depending on the number and identity of the countries selected.
Step 3: WIPO Reviews the Application and Issues the International Registration
WIPO will conduct its own formal examination of the international application to ensure that it complies with administrative requirements, that you paid the correct fees, and that you have properly classified the goods and/or services under the Nice system.
If everything is in order, WIPO issues an International Registration Number (IRN) and a registration date and then notifies all designated countries, including the United States, of the request for protection.
At this point, the application is considered registered internationally, but not yet granted as protection in any specific country. Each designated office still performs its own examination.
Step 4: USPTO Receives and Dockets the Section 66(a) Application
Upon receiving notification from WIPO, the USPTO assigns the application a U.S. serial number and then dockets it for examination as a Section 66(a) application.
At this stage, the application is treated similarly to a U.S. national application in terms of examination, but with key distinctions:
- No declaration of use is required;
- There is no need for a specimen of use at the time of filing; and
- Amendments to the identification of goods/services are limited to narrowing within the original IR language.
Step 5: USPTO Conducts Substantive Examination
A USPTO examining attorney reviews the application to assess compliance with U.S. trademark law. The examiner will check for the formal and substantive requirements it checks in other trademark applications, such as:
- Conflicts with existing marks (likelihood of confusion under §2(d));
- Descriptiveness or genericness (§2(e));
- Improper identification or classification of goods/services;
- Translation or transliteration requirements for non-English marks;
- Missing disclaimers (e.g., disclaimed generic terms); and
- Any other formal defects.
If any issues are found, the USPTO will issue an Office Action, which must be responded to within an extendable 3 months by a U.S.-licensed attorney.
Step 6: Publication and Opposition Period
If the application passes examination (or all objections are overcome), it proceeds to publication in the USPTO’s Official Gazette for a 30-day opposition window. During this period, any third party can file an opposition or a request to extend the opposition period. If no opposition is filed (or any opposition is resolved in favor of the applicant), the application proceeds to registration.
Step 7: USPTO Issues the U.S. Registration
After successful completion of the opposition period, the USPTO registers the mark and issues a U.S. Certificate of Registration under Section 66(a). The registration date aligns with the conclusion of the opposition period, not the original IR date. From this point forward, the registrant must actively monitor and maintain the registration, just as with any domestic mark.
Again, because this application is based on an international registration and not domestic use of the mark, no Statement of Use is required to obtain the registration.
Step 8: Post-Registration Maintenance Requirements
Although the international registration is renewed centrally at WIPO every 10 years, this does not fulfill U.S. maintenance obligations. To keep the U.S. registration alive, you must:
- File a Section 71 Declaration of Use between the 5th and 6th year after the U.S. registration date;
- Optionally file a Section 15 Declaration of Incontestability at the same time;
- File subsequent Section 71 renewals every 10 years after registration.
If you fail to file the required Section 71 declarations – even if the international registration is renewed – the U.S. registration will be canceled.
4. Key Features of a Section 66(a) Filing
Filing a U.S. trademark application under Section 66(a) comes with a unique set of structural features that distinguish it from traditional U.S. applications filed under Sections 1(a) (in-use applications) or 1(b) (intent-to-use applications). These characteristics flow directly from the application’s origin as an international registration through the Madrid Protocol, and they impact examination, prosecution, and maintenance within the U.S.
Below is a breakdown of some defining features of a Section 66(a) filing, with additional context and implications:
4.1. Filing basis: International Registration under Madrid Protocol
As should be clear from the above, Section 66(a) applications are not filed directly with the USPTO. Instead, they originate from an international registration (IR) filed with WIPO. The international application is based on a trademark filed or registered in the applicant’s home country and designates the United States for protection.
The U.S. portion of the IR, i.e., the Section 66(a) application – is transmitted by WIPO to the USPTO and examined as if it were a U.S. application, but with key procedural differences. WIPO will also send the IR to other countries you select, where it will be examined under each country’s own local rules.
4.2. Filing date: Date of International Registration (or subsequent designation)
The effective U.S. filing date is the date of the international registration, or, in the case of a subsequent designation, the date that the U.S. was added as a designated country through WIPO. This date is treated by the USPTO as the formal filing date for all legal purposes, including:
- Priority determinations in likelihood of confusion analyses,
- Timing of opposition windows,
- Deadlines for Office Action responses and maintenance filings.
This provides legal certainty and uniformity across jurisdictions for globally-minded brand owners. However, if the US application matures into a registration, the critical date for post-registration deadlines is keyed to the registration date of the US application.
4.3. Attorney requirement: Foreign applicants must appoint a U.S. attorney
Since 2019, the USPTO has required all foreign-domiciled applicants – including those filing under Section 66(a) – to appoint a U.S.-licensed attorney to handle the U.S. portion of the application. While you can file a Section 66(a) application without a US attorney (because you do this by designating the US through WIPO), you will be required to use a US attorney to prosecute the application.
This requirement is triggered:
- When responding to any Office Action or refusal from the USPTO;
- When submitting any post-filing correspondence; and
- When filing maintenance documents.
Failure to use U.S. counsel when required can result in abandonment of the application or registration.
4.4. Use in commerce: Not required at the time of filing
Unlike U.S. applications filed under Section 1(a) or 1(b), a Section 66(a) applicant is not required to allege use of the mark in U.S. commerce at the time of filing, nor to file an intent-to-use declaration.
This is one of the main benefits of the Madrid Protocol system: it allows trademark holders to file in multiple countries without being commercially active in each one at the time of filing. However, this does not exempt the applicant from proving use later on for post-registration purposes.
To maintain a Section 66(a) registration in the U.S., the registrant must:
- File a Section 71 Declaration of Use between the 5th and 6th year after registration, and
- Submit new specimens of use showing the mark in connection with the goods/services listed in the registration.
Failure to provide proper specimens and meet these deadlines can result in cancellation of the U.S. registration—even if the IR is renewed with WIPO.
Practical Tip: Ensure that you actually use your trademark in connection with a product or service sold in the US well before you have to file the maintenance paperwork for your trademark registration.
4.5. Opposition: Subject to opposition in the U.S. after publication
Once a Section 66(a) application is approved by the examiner, it is published in the Official Gazette of the USPTO, just like a domestic U.S. application. At that point, third parties have 30 days to file an opposition proceeding or a request to extend the opposition period.
Oppositions are litigated before the Trademark Trial and Appeal Board (TTAB) and follow U.S. procedural rules, even for foreign applicants.
Thus, despite originating through WIPO, Section 66(a) applications are fully subject to U.S. opposition and cancellation proceedings. If you have not used your trademark in the U.S, an opposition or cancellation can be particularly difficult to win if the petitioning party – the other side – alleges priority of use.
4.6. Maintenance: Renewal of IR with WIPO does not suffice—must file Section 71 in U.S.
A common misconception among Madrid Protocol users is that renewing their international registration at WIPO will automatically maintain their trademark in all designated countries. That is not true in the U.S.
To keep a U.S. registration based on an IR alive:
- A Section 71 Declaration of Use must be filed between the 5th and 6th anniversary of the U.S. registration date;
- A renewal of the U.S. registration via Section 71 (and optionally Section 15 for incontestability) must be filed every 10 years;
- Renewing the IR alone is insufficient – the U.S. registration will be canceled if the Section 71 is not timely filed, even if the IR remains active.
This is a critical compliance detail for foreign applicants: failure to maintain your U.S. rights through the USPTO can result in unintentional loss of protection, despite an active IR.
Practical Tip: Do not rely on third parties to remind you of the renewal dates. Docket your renewal deadlines as soon as your trademark registers. Enter the deadlines into two calendars that you will still be using five years after registration.
5. Advantages of Filing Under Section 66(a)
Filing a U.S. trademark application on a Section 66(a) basis through the Madrid Protocol offers a number of strategic and practical advantages for brand owners seeking international protection. While it comes with its own limitations, many global applicants find Section 66(a) to be an efficient and cost-effective entry point into the U.S. trademark system.
Here are the key advantages of using Section 66(a):
5.1. One Application, Multiple Countries
The most obvious and compelling benefit of the Madrid Protocol is the ability to file a single international application and designate protection in over 130 member countries, including the United States. This saves time, reduces administrative burden, and allows a centralized strategy for brand expansion.
Instead of navigating different filing systems, languages, and procedures for each country individually, you file one application through WIPO based on your home country’s registration, and extend protection to any member countries you choose. The U.S. designation becomes your Section 66(a) filing.
5.2. Centralized Portfolio Management
Once your international registration is in place, you can manage the trademark centrally through WIPO. Changes in name or address of the trademark owner can be recorded once and reflected across all designated countries. WIPO can centrally handles ownership transfers, renewals, or limitation of goods/services, without needing to make the change in each jurisdiction separately.
This centralized mechanism significantly reduces the cost and complexity of managing a global trademark portfolio, especially useful for large corporations and international brand owners.
5.3. Lower Upfront Filing Costs
A Section 66(a) filing typically has lower upfront costs compared to filing a national U.S. application directly under Section 1(a) or 1(b). Instead of hiring U.S. counsel to draft and file a domestic application, the filing is handled through WIPO and transmitted to the USPTO.
This is particularly attractive for applicants who are seeking coverage in many countries at once. You pay WIPO’s filing fees (which vary by country and class) and avoid duplicative filings and translations for each jurisdiction.
Do note, however, that additional costs may arise later (e.g., U.S. attorney fees for Office Action responses), but the initial filing cost is usually lower.
5.4. No Immediate Use Requirement in the U.S.
Unlike Section 1(a) applications, which require actual use in U.S. commerce, or Section 1(b) applications, which require a good-faith intent to use, Section 66(a) applications have no use requirement at the time of filing.
This provides significant flexibility to foreign applicants who are:
- Still planning to enter the U.S. market;
- Awaiting product launches, distribution agreements, or expansion efforts;
- Building their international trademark portfolio in anticipation of growth.
This “file now, use later” approach allows you to secure priority without being penalized for not having immediate commercial activity in the U.S.
However, this characteristic does not mean you can forget about using your mark in the US. While no use is required to register under Section 66(a), you will have to prove up use later for post-registration maintenance (e.g., Section 71 declarations).
5.5. Uniform Classification and Language
The Madrid Protocol uses the Nice Classification system, which most countries, including the U.S., also follow. This means that if your application is well-prepared, you can use consistent class numbers and terminology across jurisdictions.
Additionally, Madrid filings are submitted in English, French, or Spanish, and transmitted to the designated offices in one of those languages, eliminating the need for country-specific translations at the outset.
5.6. Strategic Priority Claiming
By filing through the Madrid Protocol, you can:
- Claim priority to your home application (if filed within 6 months), preserving your filing date in the U.S. and other countries; and
- Extend protection later through subsequent designations to additional countries as your business expands, all while preserving your original IR number.
This makes Madrid a flexible foundation for scaling your trademark protection over time.
6. Disadvantages and Limitations of Section 66(a)
6.1. Dependence on the Basic Application (The “Central Attack” Risk)
One of the most critical, and often misunderstood, risks in filing a Section 66(a) U.S. trademark application under the Madrid Protocol is the requirement that the international registration is dependent on the continued validity of the basic application or registration in the applicant’s home country for the first five years of the international registration’s life.
This is sometimes referred to as the “central attack” vulnerability.
When you file an international application through WIPO, the app is based on either:
- A basic application (if your home registration is still pending), or
- A basic registration (if your mark is already registered in your home country).
If, at any point during the first five years from the date of the international registration:
- The basic application is abandoned, withdrawn, or refused, or
- The basic registration is canceled, limited, or allowed to lapse,
then your entire international registration, including all designation, must be canceled to the same extent. This includes the U.S. designation under Section 66(a), no matter how far along the U.S. application may be.
In other words, the international registration is “centrally dependent” on the continued health of the original home filing. If the base fails, all of the dominoes fall.
Real-world implications:
- A third party who opposes your home registration can cause a global collapse of your international protection, including your U.S. rights.
- If your mark is found unregistrable in your home country for descriptiveness, likelihood of confusion, or other grounds, the U.S. designation may also be canceled, even if those grounds wouldn’t apply under U.S. law.
- An applicant might spend years prosecuting or defending a mark in multiple countries, only to lose all of it due to a flaw or opposition at home.
Thus, filing local trademark applications based on a central international registration does carry some risk. You need to be incredibly confident in the accuracy and propriety of the basis application, and you need to be confident that it will not be abandoned or cancelled in the five-year future.
Can this be avoided or fixed?
If your international registration is canceled as a result of this central dependency, you may have a second chance through a process called transformation. Transformation allows you to file a new national U.S. application under Section 1(a) or 1(b) within 3 months of cancellation and retain the original filing and priority date of the international registration. Similar processes are available in other countries.
However, transformation has drawbacks:
- It requires paying new U.S. national filing fees;
- You must satisfy all U.S. requirements, including intent-to-use or actual use; and
- It’s a more costly and cumbersome fix than proactively avoiding the risk in the first place.
Best practices to manage central attack risk:
- Wait until your home registration issues before filing an international registration, if possible, to avoid dependency on a vulnerable pending application.
- Make sure your home application is well drafted and defensible, particularly in jurisdictions where oppositions or examination can be unpredictable.
- Monitor the health of your basic application, especially if you’re managing multiple designations globally.
- If your home country’s application is under attack (opposition or cancellation), consider filing direct national applications in key countries (like the U.S.) as a backup, outside of the Madrid system.
6.2. No Amendment of Goods/Services Beyond Scope of IR
One of the most significant limitations of a Section 66(a) application is that the USPTO does not permit you to broaden or materially amend the identification of goods and services beyond what is included in the original International Registration (IR) as recorded with WIPO.
What does this mean in practice?
The United States has strict requirements for how goods and services must be described in trademark applications. The USPTO requires specificity and clarity — for example, “clothing” is not acceptable on its own. The applicant must specify the type of clothing, such as “t-shirts, sweatshirts, and jeans.”
However, if your IR designates only “clothing” as the goods, you cannot later amend it in the U.S. application to say just “t-shirts and jeans.” The only way you could amend the goods description to “t-shirts and jeans” is if the IR previously said “clothing, t-shirts and jeans.” The USPTO examiner may issue an Office Action requiring a narrower or more definite identification, but you will be restricted in how you can respond. If your proposed amendment goes beyond the literal wording of the IR — even if it would otherwise be an acceptable identification under U.S. standards — it will be rejected as outside the scope.
Why is this a problem?
- You cannot add new goods or services—even if they’re closely related.
- Foreign trademark applications often have longer, broader, or just different goods and services descriptions that don’t always correspond to US examination standards.
- You may receive a USPTO refusal requiring clarification, but you won’t be able to comply if the IR’s description of goods or services is too vague.
- You may have to delete or disclaim entire classes of goods/services that don’t meet USPTO standards.
- You cannot add new goods or services to a Section 66(a) application after the IR is issued, even in the same class.
This rigidity can result in truncated rights in the U.S., even if you have broader protection in other countries under the same IR.
Ways to avoid this pitfall:
- When preparing the international application, work with local counsel who understands both WIPO’s formal rules and the specific requirements of U.S. trademark law.
- Draft your goods/services descriptions with U.S. acceptability in mind. The USPTO has a public list of acceptable goods and services identifications that you can reference.
- If your current IR is already too broad or vague, consider filing a separate U.S. application under Section 1(a) or 1(b), where you’ll have more flexibility to tailor the identification of goods/services to U.S. requirements.
- You can narrow the list of goods/services (by deleting or restricting goods/services).
- You can clarify the language to meet USPTO specificity requirements. This is usually done in communication with the USPTO.
6.3. Post-Registration Maintenance
Obtaining a U.S. registration through a Section 66(a) application is only the beginning. To keep the registration active and enforceable, you must meet specific ongoing maintenance requirements under U.S. trademark law, regardless of whether the international registration remains in good standing with WIPO.
Foreign applicants often mistakenly believe that renewing the International Registration (IR) with WIPO is sufficient to maintain protection in all designated countries. That is not true for the United States. The USPTO imposes its own independent obligations on Section 66(a) registrations, and failure to comply can result in cancellation of your U.S. registration, even if the IR is fully valid elsewhere.
Here’s what you must do:
A. File a Section 71 Declaration of Use Between the 5th and 6th Year
Between the fifth and sixth year after the U.S. registration date (not the IR date), you must file a Section 71 Declaration of Use. This document proves that the mark is actually being used in U.S. commerce in connection with the registered goods or services. It includes:
- A declaration, signed under penalty of perjury, that the mark is in use in U.S. commerce for each class of goods/services listed.
- A specimen (real-world example) showing actual use of the mark in commerce for at least one item per class.
- Payment of a USPTO filing fee per class.
If your mark is not in use in connection with the registered goods or services, you must delete those items from the registration or risk the entire registration being canceled.
B. Optional: File a Combined Section 71 and 15 Declaration
Alongside the Section 71 filing, you may also file a Section 15 Declaration of Incontestability, but only if the mark meets certain eligibility criteria.
A Section 15 filing is a declaration that, once accepted, grants the registration incontestable status, meaning that certain challenges to your rights (such as descriptiveness) can no longer be raised by third parties in court or at the USPTO.
Eligibility for Section 15:
- The mark must have been in continuous use in U.S. commerce for five consecutive years after registration.
- There must be no pending legal challenges to the mark at the time of filing.
While not required, Section 15 protection gives the registrant stronger enforcement rights in legal proceedings, making the mark more durable and difficult to challenge.
The USPTO allows you to file a combined Section 71 and 15 declaration in one form, with one set of specimens and declarations. This can potentially save time and cost.
Practical Tip: File the Section 15 declaration if you can. This filing strengthens your mark and can be useful later in the life of the trademark.
C. Renew the International Registration Through WIPO Every 10 Years
To maintain protection under the Madrid Protocol, the international registration must be renewed through WIPO every 10 years from the date of the IR. This is done centrally and applies to all designated countries.
However, renewal of the IR does not affect the maintenance status of your U.S. registration. Even if you successfully renew the IR, the U.S. registration can still be canceled for failure to meet local U.S. requirements, most notably the Section 71 filings described herein.
D. File a Section 71 Declaration Again Every 10 Years in the US.
In addition to renewing your IR with WIPO every 10 years, you must also file a new Section 71 Declaration of Use with the USPTO during the 9th–10th year after U.S. registration, and every 10 years thereafter.
This filing reaffirms ongoing use of the mark in U.S. commerce. You must submit current specimens of use for each class as well as a fee for each class. If you do not file in time, the trademark registration will be cancelled. A 6-month grace period is available, but given the UPSTO’s current long delays in reviewing maintenance filings, it is not recommended that you wait until the grace period.
Practical Tip: File the WIPO maintenance documents and the US maintenance documents at the same time, or as close in time as possible (while still filing early in the US window) to ensure you don’t forget one or the other.
E. Summary of Post-Registration Deadlines
Deadline | Required Action | Jurisdiction |
Years 5–6 | File Declaration of Use | US – Section 71 |
Years 5–6 (optional) | File Incontestability Declaration | US – Section 15 |
Every 10 Years | File Renewal and Use Declaration | US – Section 71 |
Every 10 years | Renew the International Registration | WIPO (Madrid Protocol) |
7. Conclusion
Filing a U.S. trademark application under Section 66(a) through the Madrid Protocol is a powerful tool for expanding brand protection—but it’s not “set it and forget it.” You still need to engage in active U.S. prosecution, respond to Office Actions, track post-registration maintenance deadlines, and guard against central attack vulnerabilities.
With the right preparation and assistance from U.S. counsel, you can take full advantage of Madrid’s efficiency while safeguarding your U.S. trademark rights.
If you’re an international business seeking U.S. registration through WIPO, or a foreign IP counsel with questions about Section 66(a) issues, we regularly assist clients with Madrid filings, Office Action responses, and post-registration maintenance.
Contact us today to ensure your U.S. designation is on solid ground.