Protecting Trademark Rights Outside the U.S.

Registering Marks Abroad, Pros and Cons of the Madrid System, Enforcing IP Rights

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

Conducted on Thursday, June 21, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide counsel to trademark owners and applicants in 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 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. Trademark owners doing business outside the U.S. must consider how best to protect their trademarks in other countries.

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

Applicants and their counsel 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 international registration strategy, discussed the advantages and disadvantages of the Madrid System for International Registration, explains the process of registering in a foreign country, and offers best practices for trademark rights enforcement in other countries.

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Outline

  1. Decision to register
    1. Prioritizing countries
    2. Defensive filings
    3. First-to-file vs. 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 crucial questions:

  • What are the factors to determine 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?

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

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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