Madrid Protocol: Obtaining and Maintaining International Trademark Protection

Filing Procedure, Deficiency Notices, Subsequent Designations, Application Amendments, and More

A live 90-minute premium CLE video webinar with interactive Q&A


Thursday, January 28, 2021

1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, January 8, 2021

or call 1-800-926-7926

This CLE webinar will guide IP counsel on the Madrid Protocol, including the application and examination process, how and where to file, amending an application, and dividing a registration. The panel will examine how to respond to a notice of irregularity from WIPO, apply for subsequent designations, and use the e-renewal process. The group will also discuss the limitations or drawbacks of the system.

Description

The Madrid Protocol provides a mechanism by which trademark applicants can seek protection in all Madrid Protocol countries (107 contracting parties) through a single registration. However, while there are significant benefits to an International Registration, including cost savings, flexibility, and easier portfolio management, there are disadvantages and risks too.

Such risks include the dependence of an international application on an underlying application filed with or a registration issued by the Office of Origin. If the underlying application or registration is limited or abandoned during the five-year dependency period, the International Registration is canceled with the option to convert the registration to national registrations.

The International Registration is also limited to the goods or services in the application or registration in the Office of Origin. For US applicants, this means the International Registration will be subject to the requirements and limitations on goods and services that the USPTO requires.

Counsel must understand the ins and outs of obtaining, maintaining, transferring, and enforcing registrations through the Madrid system.

Listen as our authoritative panel offers guidance on navigating the Madrid Protocol, including the mechanics of the process, how and where to file, amending an application, and dividing a registration. The panel will examine how to respond to a deficiency notice from WIPO, subsequent designations, differences among countries in handling certain aspects of Madrid designations, and the e-renewal process. The panel will also discuss the limitations or drawbacks of the system.

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Outline

  1. Mechanics of the Madrid Protocol
    1. How and where to file
    2. How the process works
    3. 18-month rule
  2. Responding to a deficiency notice from WIPO
  3. Subsequent designations and differences among countries in handling certain aspects of Madrid designations
  4. Amending an application
    1. For only one country
    2. For multiple countries
  5. How to divide a Madrid registration
  6. E-renewal process
  7. Limitations or drawbacks of the system

Benefits

The panel will review these and other high priority issues:

  • What are the advantages and disadvantages of filing under the Madrid Protocol?
  • What are the differences among countries in handling certain aspects of Madrid designations?
  • What steps should counsel take to amend a trademark application for one country? For multiple countries?
  • How should counsel utilize the Madrid Protocol to protect trademarks worldwide?

Faculty

Grahn, Barbara
Barbara J. Grahn

Partner
Fox Rothschild

Ms. Grahn counsels clients in a range of trademark, copyright and advertising matters. She handles U.S. and...  |  Read More

Kunz-Hallstein, Roberto
Roberto Kunz-Hallstein

Partner
Dr. Kunz-Hallstein Rechtsanwälte

Mr. Kunz-Hallstein practices in all fields of intellectual property, especially in trademark prosecution and...  |  Read More

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