[E-trademarks] Madrid question

[SIM Quan-Ling]

Classification: WIPO CONFIDENTIAL

Hi,

It is possible to file a U.S. certification mark internationally through the Madrid System, but there are a few important considerations to keep in mind:


  1.  Classification Adjustment:
The U.S. uses Class A and B for certification marks, which are not part of the Nice Classification system used under the Madrid Protocol. When filing internationally, you will need to reclassify the goods or services being certified into the appropriate Nice classes. This step is essential to avoid irregularities during the examination process.
  2.  Indicating the Mark Type:
In the international application form, you must explicitly indicate that the mark is a collective mark, certification mark, or guarantee mark (please see below the section relating to the type of mark). This information is recorded in the International Register, will appear in the registration certificate and is passed on to the designated Contracting Parties, who will then apply their national laws to assess the mark.
  3.  Jurisdictional Differences:
Not all Madrid member countries recognize certification marks, or they may have different legal frameworks for them. As a result, some offices may issue refusals or request additional documentation. In the Madrid Members Profiles<https://www.wipo.int/madrid/memberprofiles/selectmember>, you will find information about national requirements for the protection of collective, certification and guarantee marks under the Madrid System. It's advisable to consult local counsel in key jurisdictions to ensure compliance.

You may check the box below on the international application form:

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If you need assistance with reclassification or navigating the application process, please contact us using Contact Madrid: https://www3.wipo.int/contact/en/madrid.

Quan

Quan-Ling Sim
Head (ad interim), Madrid Operations Service


From: Madrid <madrid-bounces at oppedahl-lists.com> On Behalf Of Alex Butterman via Madrid
Sent: Tuesday, October 21, 2025 21:07
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Alex Butterman <abutterman at dbllawyers.com>; madrid at oppedahl-lists.com
Subject: Re: [Madrid] Madrid question

I have. The countries are typically going to classify the goods/services in the IC that they relate to. But a fair number of countries also don't necessarily notice that the application is a certification mark because the only indicator on the iTEAS Madrid application form that identifies the application as a certification mark is a little checkbox in the middle of the form.

Alex Butterman
Partner
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Janet Satterthwaite via E-trademarks
Sent: Tuesday, October 21, 2025 1:23 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Janet Satterthwaite <jsatterthwaite at potomaclaw.com<mailto:jsatterthwaite at potomaclaw.com>>
Subject: [E-trademarks] Madrid question

Apologies if this should be on the Madrid list-serve, but I have mysteriously lost or misplaced my access to that.

Has anyone tried filing a US certification mark abroad under the Madrid protocol?  How do you deal with the fact that it is in Class A or B rather than a Nice classification? And many other questions. I am aware that not everywhere even recognizes certification marks.

Thanks

Janet



Janet F. Satterthwaite|Partner/ Chair, Trademark Practice|Potomac Law Group, PLLC

1717 Pennsylvania Avenue, NW, Suite 1025

Washington, D.C. 20006

202-486-1578

jsatterthwaite at potomaclaw.com<mailto:jsatterthwaite at potomaclaw.com>|www.potomaclaw.com<https://www.potomaclaw.com>



https://www.potomaclaw.com/professionals-janet-f-satterthwaite



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