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 premium CLE webinar with Q&A
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.
Outline
- Decision to register
- Prioritizing countries
- Defensive filings
- First-to-file vs. first-to-use
- Use requirements
- Madrid System for International Registration
- Advantages of Madrid System over filing directly in individual countries
- Disadvantages of Madrid System over filing directly in individual countries
- The details
- Letters of consent
- Temporary assignments
- Association of marks
- Enforcement
- Trademark watches
- Opposition actions
- 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

Stephen Feingold
Partner
Kilpatrick Townsend & Stockton
Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex... | Read More
Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex trademark litigation matters and sophisticated transactional projects. He advises clients with large global portfolios on how to effectively and efficiently manage and utilize these assets to further their business objectives privacy issues and other Internet-specific problems.
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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
Ms. Grahn counsels clients in a range of trademark, copyright and advertising matters. She handles U.S. and international trademark clearance, prosecution and enforcement, brand development and management, trademark and copyright infringement counseling and disputes, domain name issues, advertising compliance, sweepstakes and contest rules, and copyright registrations for large databases and websites.
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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
Mr. Kunz-Hallstein practices in all fields of intellectual property, especially in trademark prosecution and litigation as well as portfolio management.
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