[E-trademarks] USPTO's pre-populated Madrid application form
Carl Oppedahl
carl at oppedahl.com
Wed Sep 10 19:35:01 EDT 2025
Back in the early days, soon after the US joined Madrid, it usually only
took one or two days for the newly filed US app to be available for
one-click Madrid filings. only one or two days.
Oh in fact I recall now. a month or so after Madrid started in the US,
I tried to do a one-click Madrid filing. It did not work. I called up
Craig Morris. cages got rattled or something, and it got set up that
the file intake people at the Trademark office would set a goal of
getting the cases fully loaded into the system Right Away. and so then
it got to where it only took one or two days for the newly filed US app
to be available for one-click Madrid filings. only one or two days.
Now of course we see Ken's postings where seemingly simple file intake
tasks for US trademark applications are taking months to get done. Or
the cases are reaching an Examiner with some intake tasks having been
skipped.
But what we do see is that a newly filed US application does tend to
show up in TSDR within just a few minutes. Given that we can see it in
TSDR within a few minutes, I guess I don't understand why the one-click
Madrid filing would not be possible.
On 9/10/2025 3:13 PM, Kevin Grierson wrote:
>
> It **is** a great feature. Unfortunately, it can take a very long time
> before the PTO will process the application to the point that you can
> use it. I had one recently take several months.
>
> *Kevin Grierson***
>
>
>
> |
>
>
>
> Partner
>
>
>
>
>
> <https://www.cm.law/>
>
>
>
>
> Mobile:
>
>
>
> 757-726-7799 <tel:757-726-7799>
>
>
>
>
> Email:
>
>
>
> kgrierson at cm.law <mailto:kgrierson at cm.law>
>
> */Please note: Culhane Meadows is now CM Law
> <https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>/*
>
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Katherine Koenig via E-trademarks
> *Sent:* Wednesday, September 10, 2025 5:08 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
>
> EXTERNAL EMAIL
>
> 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
>
> /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./
>
> *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
>
> /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./
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250910/557fff4b/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 5049 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250910/557fff4b/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 285 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250910/557fff4b/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 394 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250910/557fff4b/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.png
Type: image/png
Size: 7679 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250910/557fff4b/attachment-0003.png>
More information about the E-trademarks
mailing list