Meeting Distinctiveness Requirements for International Trademarks

Protecting Global Brands in the EU, UK, China, Canada, and More

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


Tuesday, May 25, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, April 30, 2021

or call 1-800-926-7926

This CLE webinar will guide trademark counsel for multinational companies on distinctiveness outside the U.S. The panel will compare and contrast the requirements and offer best practices for meeting the requirements in multiple countries.

Description

Different countries have different processes and requirements that brand owners must navigate in order to build the brand portfolios and protect the brand. Most countries include distinctiveness as one of the essential requirements for registering a trademark or service mark. Under U.S. law, a trademark must either be inherently distinctive or have acquired prior to or during the examination of the federal application a secondary meaning that distinguishes the goods or services to obtain full protection. Marks may be found to lack inherent distinctiveness sometimes after the required use evidence is provided. For such marks--particularly descriptive and geographically descriptive marks, surnames, and trade dress among others--a showing of acquired distinctiveness can mean the difference between registration on the Principal Register, registration on the Supplemental Register, and abandonment of a federal application.

The challenge in the European Union is that a trademark must be or must have become distinctive in essentially all member states. Considering the variation in language and culture between EU countries, it can be difficult to show how consumer perceptions and market conditions in each of the countries supports a claim of EU-wide acquired distinctiveness. Additionally, in many non-U.S. jurisdictions, marks that are not inherently distinctive would have had to acquire distinctiveness before the application was filed. On the other hand, such jurisdictions do not usually have the ability to evaluate the distinctiveness of a mark in the context of use evidence because pre-registration use evidence is rarely required. The China National Intellectual Property Administration follows strict criteria, while the courts will consider additional factors when determining if a mark has acquired distinctiveness.

Counsel for multinational companies face the challenge of seeking protection for marks around the globe. As a result, they must understand the different requirements for demonstrating distinctiveness and how to best plan to meet the requirements.

Listen as our authoritative panel of IP attorneys examines the requirements for meeting distinctiveness in several countries. The panel will compare and contrast the requirements and offer guidance for meeting the requirements in multiple countries.

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Outline

  1. What works and what doesn't to demonstrate acquired distinctiveness
    1. EU
    2. UK
    3. Canada
    4. China
  2. Acquired distinctiveness
    1. Treatment by respective courts
    2. Treatment by the respective IP offices
  3. Best practices

Benefits

The panel will review these and other relevant issues:

  • What strategies have trademark applicants used to demonstrate distinctiveness in different jurisdictions outside the U.S.?
  • How have the courts of the respective jurisdictions treated proffered evidence of acquired distinctiveness?
  • What best practices should counsel employ to demonstrate acquired distinctiveness outside the U.S.?

Faculty

Asbell, Matthew
Matthew D. Asbell

Principal
Offit Kurman

Mr. Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the U.S. and throughout...  |  Read More

Frisbee, Matthew
Matthew L. Frisbee

Attorney
Leason Ellis

Mr. Frisbee assists clients with a variety of trademark matters, with an emphasis on U.S. trademark prosecution and...  |  Read More

Attend on May 25

Early Discount (through 04/30/21)

Cannot Attend May 25?

Early Discount (through 04/30/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include program handouts.

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