USPTO Office Actions on Madrid Protocol Trademark Designations

Flat fee U.S. attorney representation for foreign trademark attorneys and their clients.

If you’ve received an Office Action from the United States Patent and Trademark Office (USPTO) in connection with a Madrid Protocol trademark application designating the United States, you’re in the right place.

This happens to virtually every Madrid Protocol applicant who designates the U.S. — the USPTO requires that a U.S.-licensed attorney be appointed to represent the applicant before the Office. This is not a rejection of your mark. It is a procedural requirement unique to the United States, and it is straightforward to resolve.

I’m David Oppenhuizen, a USPTO-registered patent and trademark attorney based in Grand Rapids, Michigan. I work regularly with foreign trademark attorneys and their clients across Europe, Canada, Australia, Turkey, China, Japan, South Korea, India, Israel, Brazil, Mexico, the UAE, and beyond to resolve USPTO office actions on Madrid Protocol designations efficiently and at transparent flat fees.

I provide clear, upfront quotes that foreign associates can rely on and accept payment in multiple currencies, including U.S. Dollars (USD), Canadian Dollars (CAD), Australian Dollars (AUD), Euros (EUR), British Pounds (GBP), Swiss Francs (CHF), and Turkish Lira (TRY). This allows for more stable client quotes and eliminates wire transfer fees on your end.

If you are a foreign trademark attorney or agent looking for a reliable U.S. associate to handle your client’s USPTO response, I’d welcome the opportunity to work with you. If you are handling PCT or U.S. national stage patent matters, please visit my Foreign Attorneys — Patent Filing Support page.

Why Is the USPTO Requiring a U.S. Attorney?

Under USPTO rules, any trademark applicant who does not reside or have a principal place of business in the United States must be represented by a U.S.-licensed attorney. This rule applies to all Madrid Protocol applications that designate the United States, regardless of where the application originated.

This means that even if your client’s mark has already been registered in their home country and is proceeding smoothly through the Madrid system in other designated countries, the USPTO will issue an Office Action requiring U.S. attorney representation before examination can continue.

The good news: you have six months to respond to a USPTO Office Action on a Madrid Protocol designation — longer than the standard three-month deadline that applies to domestic U.S. trademark applications. This extended deadline exists because Madrid Protocol applications are governed by treaty obligations. That said, it is always best to act promptly.

Ready to move forward? Contact David →

What Else Might Be in the Office Action?

In addition to the U.S. attorney appointment requirement, the USPTO examining attorney may raise one or more additional issues. These commonly fall into the following categories:

Procedural and Administrative Issues

• Appointment of a U.S.-licensed attorney (required in virtually all cases)
• Applicant domicile address required
• Entity type clarification

Identification of Goods and Services Issues

• Indefinite or overly broad identification of goods or services
• Classification issues
• Scope of identification requiring clarification or limitation

Disclaimer Requirements and Minor Issues

• Disclaimer of non-distinctive elements of the mark
• Miscellaneous advisory statements
• Minor informational requests

Substantive Refusals

• Likelihood of confusion with a previously registered mark (Section 2(d))
• Merely descriptive refusal (Section 2(e)(1))
• Primarily merely a surname
• Deceptively misdescriptive
• Geographic descriptiveness
• Specimen issues (Section 45) — if use in commerce is required

Regardless of what your Office Action contains, I can help. See my flat fee schedule below.

Flat Fee Pricing for Madrid Protocol Office Action Responses

Transparent, predictable pricing you can communicate directly to your clients.

All fees are quoted in U.S. Dollars (USD). I also accept payment in Canadian Dollars, Australian Dollars, Euros, British Pounds, Swiss Francs, and Turkish Lira.

Note: USPTO official filing fees may apply separately in certain situations, such as when additional classes are required and the applicant elects not to limit the identification of goods or services. Any applicable official fees will be identified and communicated to you in advance.

For a full overview of my fee arrangements, visit my Fee Arrangements page.

Ready to move forward? Contact David →

Why Foreign Associates Choose My Practice

• USPTO-registered since 2006 — over 20 years of U.S. trademark and patent experience
• 650+ trademark registrations obtained for clients in 40+ countries
• Flat fee pricing — predictable costs you can communicate directly to your clients
• I accept payment in multiple currencies, eliminating wire transfer fees and simplifying billing for your clients
• Direct attorney access on every matter — as a solo practitioner, you work directly with me, not a junior associate
• Experienced with international clients across Europe, Canada, Australia, Turkey, China, Japan, South Korea, India, Israel, Brazil, Mexico, and the UAE
• Responsive and easy to work with

Contact

If your client has received a USPTO Office Action on a Madrid Protocol designation, I would be happy to discuss the matter or provide a firm quote.

Contact me directly to discuss the Office Action or request a quote.