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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 video webinar with Q&A

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Conducted on Tuesday, December 14, 2021

Recorded event now available

or call 1-800-926-7926

This CLE course 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. Registration may be necessary or advisable to protect a mark outside the country. 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 consider whether, where, and when to register the marks outside the U.S. Counsel must balance the costs and benefits of registration, decide whether and when the Madrid System offers a desirable alternative, and determine what is involved in enforcing their IP rights.

Listen as our authoritative panel of trademark legal specialists evaluates international registration strategy, discusses 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 in 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?

Faculty

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

Leonard, Michael
Michael J. Leonard
Partner
Fox Rothschild

Mr. Leonard provides strategic counsel on the availability and adoption of trademarks as well as the management and...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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