Protecting Trademark Rights Outside the U.S.

Registering Marks Abroad, Leveraging the Madrid System, and Enforcing IP Rights

Recording of a 90-minute CLE webinar with Q&A


Conducted on Wednesday, April 30, 2014

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to counsel for trademark owners and applicants on deciding whether to register marks outside the U.S., the advantages and disadvantages of the Madrid System for International Registration, and trademark rights enforcement challenges.

Description

Trademark owners doing business outside the U.S. must consider differences in how other countries govern and administer intellectual property rights. Trademark rights are territorial, and a U.S. registration offers protection only in the U.S. To protect a mark outside the U. S., registration may be necessary or advisable.

Counsel to trademark owners and applicants in the global market may have options for securing trademark protection in other countries, including the Madrid System for International Registration.

Counsel to trademark owners and applicants should carefully consider whether, where and when to register the marks outside the U.S., weighing the costs and benefits of registration, whether and when the Madrid System offers a desirable alternative, and what is involved in enforcing their IP rights.

Listen as our authoritative panel of trademark legal specialists evaluates the decision to register and the advantages and disadvantages of the Madrid System for International Registration, outlines the details associated with registering in a foreign country, and offers best practices for trademark rights enforcement.

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Outline

  1. Decision to register
    1. Prioritizing countries
    2. Defensive filings
    3. First-to-file v. first-to-use
    4. Use requirements
  2. Madrid System for International Registration
    1. Advantages of Madrid System over filing directly in individual countries
    2. Disadvantages of Madrid System over filing directly in individual countries
  3. The details
    1. Letters of consent
    2. Temporary assignments
    3. Association of marks
  4. Enforcement
    1. Trademark watches
    2. Opposition actions
    3. Enforcement actions

Benefits

The panel will review these and other key questions:

  • What factors should be considered when determining whether and where to register a mark outside the U.S.?
  • What are the advantages and disadvantages of the Madrid System for International Registration?
  • What steps can trademark owners take to enforce their IP rights internationally?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Feingold, Stephen
Stephen Feingold

Partner
Kilpatrick Townsend & Stockton

Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex...  |  Read More

Barbara J. Grahn
Barbara J. Grahn

Partner
Oppenheimer Wolff & Donnelly

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

Roberto Kunz-Hallstein
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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