Section 66(a)

Section 66(a) is a provision of the Lanham Act that allows foreign trademark applicants to seek U.S. trademark protection by filing an international registration through the Madrid Protocol. Under this pathway, an application originates with the World Intellectual Property Organization (WIPO) and is transmitted to the USPTO, rather than being filed directly with the USPTO as a domestic application.

How Section 66(a) works

A Section 66(a) application begins outside the United States. The applicant first obtains a home-country trademark application or registration (the "basic application" or "basic registration"), then files an international application through their home country's trademark office, which transmits it to WIPO.

WIPO reviews the application for formal compliance and, if approved, records the mark in the International Register. WIPO then notifies the USPTO, which examines the application under the same substantive standards that apply to any domestic filing. The USPTO may approve the mark for publication, issue office actions, or refuse registration. If the mark passes examination and survives any opposition period, it registers as a U.S. trademark.

Key characteristics

• Dependency on international registration. A Section 66(a)-based U.S. registration remains linked to the underlying WIPO international registration for five years from the date of international registration. If the international registration is canceled during that period, the U.S. registration falls with it. After five years, the U.S. registration becomes independent.
• No direct USPTO filing. The application must first be approved through the home country's trademark office and WIPO before reaching the USPTO.
• Goods and services scope. The USPTO can only examine the goods and services as identified in the international registration. Applicants cannot broaden that scope in the U.S. designation.
• Filing date. The U.S. filing date is the date on which WIPO records the international registration, not the date on which the USPTO receives the application.

Considerations and limitations

Five-year dependency risk. If the home-country basic registration is canceled or narrowed during the first five years, the U.S. registration is directly affected. Applicants should monitor their international registration status carefully during this window.

Transformation. If a Section 66(a)-based U.S. registration is canceled due to cancellation of the international registration, the applicant may be able to convert it into a domestic U.S. application under certain conditions, preserving the original filing date. This process has strict deadlines and requirements.

U.S. examination standards apply. The USPTO applies the same substantive examination standards to Section 66(a) applications as to domestic applications. Registration in the home country or through WIPO does not guarantee U.S. registration.

Attorney representation required. Foreign applicants with a Section 66(a) application pending before the USPTO must be represented by a U.S.-licensed attorney.

Related terms

• Section 1(a): The basis for domestic applications where the mark is already in use in U.S. commerce
• Section 1(b): The intent-to-use basis for domestic applications filed before use in commerce begins
• Section 44: Another pathway for foreign applicants, based on a foreign registration and filed directly with the USPTO without involving WIPO

FAQs about section 66(a)

How does Section 66(a) differ from Section 44?

Section 44 allows a foreign applicant to seek U.S. registration based on a home-country registration, filed directly with the USPTO without involving WIPO. A Section 66(a) application is always rooted in a WIPO international registration and remains linked to it for five years, creating dependency risks that Section 44 applications do not carry.

What happens if the international registration is canceled after the five-year dependency period?

Once five years have passed, the U.S. registration becomes independent and is no longer affected by cancellation of the international registration. It must then be maintained directly through the USPTO on the standard domestic renewal schedule.

Does WIPO's review reduce the USPTO's examination?

No. WIPO's review is limited to formal compliance and does not assess U.S. substantive standards. The USPTO examines Section 66(a) applications under the same criteria applied to any domestic filing, including likelihood of confusion and descriptiveness.