Registration may be necessary or advisable to protect a trademark outside the U.S. The question often facing trademark owners is where and how to file. Trademark owners doing business outside the U.S. should consider differences in how other countries govern and administer IP rights.
The Madrid System provides a mechanism by which trademark applicants can seek protection in all Madrid System countries (almost 100 contracting parties). However, while there are some benefits, such as cost savings and multi-class registrations in countries which only allow single class applications, counsel must also be aware of the disadvantages and risks.
Risks include limitations on the identification of goods and a five-year dependency period (period of uncertainty), which may make filing directly in individual jurisdictions the better option.
After identifying each country in play, applicants must weigh the advantages and disadvantages of filing under the Madrid System as opposed to filing directly in foreign jurisdictions.
Listen as our authoritative panel examines the pros and cons of the Madrid System vs. filing directly in the foreign jurisdiction(s). The panel will explore the factors that U.S. trademark applicants must consider when determining where to file and will offer guidance on how to file.
Wednesday, July 17, 2019
While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.
DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.
If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.