[E-trademarks] USPTO's pre-populated Madrid application form

Wed Sep 10 18:19:01 EDT 2025

Thanks for your early efforts Carl.  It is very useful.  Of course, it has its limitations.  You do not get that ability if you are trying to base the Madrid registration on more than one underlying base application or registration.

[Paul D. Supnik 9454 Wilshire Blvd, Ste 550 Beverly Hills, CA 90212]<https://supnik.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Katherine Koenig via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Wednesday, September 10, 2025 2:08 PM
To: Carl Oppedahl <carl at oppedahl.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: Re: [E-trademarks] USPTO's pre-populated Madrid application form

Carl, that’s amazing!  Thank you for making the one-click path possible.  It is SO much better than manual entry and makes so much sense.

Best regards,

Katherine

Dr. Katherine Koenig

Registered Patent Attorney

Koenig IP Works, PLLC

2208 Mariner Dr.

Fort Lauderdale, FL 33316

(954) 903-1699

katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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Targeted Intellectual Property Strategy

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From: Carl Oppedahl <carl at oppedahl.com>
Sent: Wednesday, September 10, 2025 4:38 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] USPTO's pre-populated Madrid application form

Yes as we know there are two filing paths -- what I call the "one-click" path and the other path where you laboriously fill in all of the fields.

The one-click path is cheaper in terms of government fees, because it is auto-certified to the IB.

The one-click path avoids the risk of mistakes made by the filer and avoids risks of mistakes made by humans in the Madrid Processing Unit.

I wonder how many people know that I am responsible for the existence of the one-click path.  Yes, back when the news came out that the US had become signatory to the Madrid Procotol, I got on the phone with Craig Morris, who was at that time the chief external-contact person for the Trademark Office.  And I emailed to him a spec sheet that I had written up, that detailed that it ought to be possible to design a one-click filing path.  Auto-certified.  You key in your "basic" application number and click about twice more and Bob was going to be your uncle.  I designed the click path for the Trademark Office.  The first question was "what is your basic filing?" and the second one was "do you want to claim Paris Article 4 priority?".  And I said the Trademark Office ought to be able to reduce the government fee since nobody at the Trademark Office would have to look at the application.

And a few weeks later, Craig phoned me up to say that it was a done deal that one of the options would be one-click filing.

On 9/10/2025 2:17 PM, Katherine Koenig via E-trademarks wrote:

Hi everyone,

I have two cases where I filed the US basic application a month ago but the USPTO still doesn’t allow me to use the pre-populated Madrid application form because “the Office has not yet completed the initial processing of the case.”

I tried calling TAC just now, but they apparently close at 4pm now. Sigh.

Does anyone have experience with this issue – should I keep waiting, call TAC tomorrow (can I do anything to nudge them to process the basic application?), or populate the Madrid application form manually (I’d prefer not to risk mistakes and then wait for the UPSTO to certify the application and send to WIPO…).  Thank you!

Best regards,

Katherine

Dr. Katherine Koenig

Registered Patent Attorney

Koenig IP Works, PLLC

2208 Mariner Dr.

Fort Lauderdale, FL 33316

(954) 903-1699

katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

[cid:image001.png at 01DC2272.AF32A420]

Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

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