Protecting Trademarks Abroad: Madrid System vs. National Filing Directly in Foreign Jurisdiction
Recording of a 90-minute premium CLE webinar with Q&A
This CLE webinar will guide counsel to trademark owners regarding trademark registration strategy outside the U.S. The panel will take an in-depth look at the advantages and disadvantages of using the Madrid System and filing national applications through local counsel in the foreign jurisdiction. The panel will examine the factors that U.S. trademark applicants should consider when determining where to file and offer guidance regarding the mechanics of making such filings.
- Pros and cons of filing under the Madrid System
- Multi-class registrations
- Dependency period
- Pros and cons of filing directly in individual countries
- The scope of identification of goods/services
- Cost of local counsel
- Considerations for determining whether to file under the Madrid System or directly in the foreign jurisdiction(s)
- Guidance for making the filing determination
The panel will review these and other key issues:
- What factors should counsel consider when determining where to register a mark outside the U.S.?
- What are the advantages and disadvantages of filing under the Madrid System?
- What are the pros and cons of filing directly in foreign jurisdictions?
Christine P. James
Kilpatrick Townsend & Stockton
Ms. James focuses her practice on domestic and international brand management. She helps clients determine the... | Read More
Ms. James focuses her practice on domestic and international brand management. She helps clients determine the availability of trademarks, develop and implement appropriate trademark registration programs, monitor and enforce trademark rights, and leverage the goodwill of trademarks through licensing. She advises clients embarking on extensive domestic and international trademark protection programs. She also counsels, coordinates and oversees numerous international contentious proceedings.Close
Matthew E. Moersfelder
Davis Wright Tremaine
Mr. Moersfelder focuses his practice on trademark, unfair competition, and copyright law. His experience includes... | Read More
Mr. Moersfelder focuses his practice on trademark, unfair competition, and copyright law. His experience includes helping clients obtain domestic and international trademarks, maintain and protect current trademarks, and assert trademark rights against infringers. He also counsels on brand-related IP issues, including advertising, maintaining quality control, licensing, and IP acquisition. His practice includes extensive counseling and management of e-commerce matters and representing clients in federal and state court, before the Trademark Trial and Appeal Board (TTAB), and in domain name arbitrations.Close