Meeting Distinctiveness Requirements for International Trademarks
Protecting Global Brands in the EU, UK, China, Canada, and More
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course 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.
- What works and what doesn't to demonstrate acquired distinctiveness
- Acquired distinctiveness
- Treatment by respective courts
- Treatment by respective IP offices
- Best practices
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.?
Matthew D. Asbell
Mr. Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the U.S. and throughout... | Read More
Mr. Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the U.S. and throughout the world. He also provides advice on patents, copyrights, domain names, and other related areas. He frequently collaborates on and authors articles on intellectual property on subjects ranging from social media and domain names to licensing, branding, and information technology. His certifications as a Social Media Strategist and Master Instructor equip him to handle complex intellectual property matters arising in the Web 2.0 space.Close
Matthew L. Frisbee
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and... | Read More
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and around the world. He routinely guides clients from trademark selection and clearance through registration and beyond, emphasizing a pragmatic and strategic approach. Mr. Frisbee also counsels brand owners regarding the intersection of trade dress, copyright, and design patent laws to protect product designs. He represents clients in trademark and copyright disputes and enforcement efforts, including handling proceedings before the Trademark Trial and Appeal Board, managing multi-jurisdictional disputes, and negotiating settlement agreements. Mr. Frisbee’s transactional experience covers IP licensing, assignments, and due diligence. He serves on the International Trademark Association’s U.S. Patent and Trademark Office Committee, which advocates to the USPTO on behalf of the trademark community. Mr. Frisbee also regularly appears as a panelist on IP topics for CLE presentations hosted by Strafford and has written articles published in the INTA Bulletin and IP Watchdog.Close
Mr. Fuhrmann is an expert in all kinds of EUTM proceedings, with a special interest in the protection and enforcement... | Read More
Mr. Fuhrmann is an expert in all kinds of EUTM proceedings, with a special interest in the protection and enforcement of Non-Traditional Trademarks. He advises international clients in complicated and complex multijurisdictional matters as well as the enforcement of famous marks. He also has extensive experience in relation to trademark portfolio management, searching, filing, and prosecuting trademarks throughout Europe and worldwide. He has actively handled proceedings before the General Court and the European Court of Justice, in Trademark as well as Design matters. He has experience in advising clients from various jurisdictions and industry sectors with particular expertise in the cosmetics, pharmaceutical, telecommunication, food and beverage, and toy industries. He also is an author in one of the leading German commentaries on EU trademark law and regularly publishes on EU trademark and design topics.Close
Smart & Biggar
Mr. Hood is sought after by brand owners focused on building and protecting their brands and reputations through... | Read More
Mr. Hood is sought after by brand owners focused on building and protecting their brands and reputations through efficient trademark clearance and prosecution. He regularly advises clients on effective strategies to manage and monetize their trademark portfolios and has successfully enforced clients’ trademark rights in Canada’s Federal and provincial courts. His practice spans all aspects of trademark counselling, prosecution and litigation. He counsels brand owners through trademark selection, clearance and prosecution, as well as opposition proceedings, section 45 non-use, cancellation proceedings and invalidity expungement proceedings. He counsels many famous brand owners, from leading professional sports teams to popular social media platforms to renowned consumer electronic companies to famous fashion houses, in the enforcement and protection of their IP rights in Canada.Close
Hongtao (Hunter) Wang
Beyond Attorneys at Law
Mr. Wang's practice focuses on all aspects of China trademark law and extends to copyright, domain name, unfair... | Read More
Mr. Wang's practice focuses on all aspects of China trademark law and extends to copyright, domain name, unfair competition and other IP related laws. With over 20 year experience, he has successfully represented both Chinese and foreign clients in protecting their brands worldwide. Since moving to New York in 2007, he mainly provides strategic advice to U.S. clients in trademark prosecution, enforcement and litigation in China.Close