Meeting Distinctiveness Requirements for International Trademarks
Protecting Global Brands in the EU, UK, China, Canada, and More

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, May 25, 2021
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide trademark counsel for multinational companies on distinctiveness outside the U.S. The panel will compare and contrast the requirements and offer best practices for meeting the requirements in multiple countries.
Faculty

Mr. Asbell, a partner and member of Lippes Mathias’ intellectual property team, works comfortably and efficiently with clients in diverse industries. Mr. Asbell's passion for his work in intellectual property arises from a deep appreciation for creativity, whether in the form of invention, design, expression, or branding and marketing. He assists clients in clearing, obtaining, enforcing, and defending trademark, patent, design and copyrights in the United States and throughout the world, while also advising on domain names, social media and related issues. Mr. Asbell serves as an adjunct professor of law and frequent guest lecturer at Fordham University and The Benjamin N. Cardozo School of Law (Yeshiva University), and has taught at Columbia University and the Instituto Superior de Derecho y Economia (ISDE) in Madrid, Spain. He regularly mentors new lawyers and law students.

Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and around the world. He routinely guides clients from trademark selection and clearance through registration and beyond, emphasizing a pragmatic and strategic approach. Mr. Frisbee also counsels brand owners regarding the intersection of trade dress, copyright, and design patent laws to protect product designs. He represents clients in trademark and copyright disputes and enforcement efforts, including handling proceedings before the Trademark Trial and Appeal Board, managing multi-jurisdictional disputes, and negotiating settlement agreements. Mr. Frisbee’s transactional experience covers IP licensing, assignments, and due diligence. He serves on the International Trademark Association’s U.S. Patent and Trademark Office Committee, which advocates to the USPTO on behalf of the trademark community. Mr. Frisbee also regularly appears as a panelist on IP topics for CLE presentations hosted by Strafford and has written articles published in the INTA Bulletin and IP Watchdog.

Mr. Fuhrmann is an expert in all kinds of EUTM proceedings, with a special interest in the protection and enforcement of Non-Traditional Trademarks. He advises international clients in complicated and complex multijurisdictional matters as well as the enforcement of famous marks. He also has extensive experience in relation to trademark portfolio management, searching, filing, and prosecuting trademarks throughout Europe and worldwide. He has actively handled proceedings before the General Court and the European Court of Justice, in Trademark as well as Design matters. He has experience in advising clients from various jurisdictions and industry sectors with particular expertise in the cosmetics, pharmaceutical, telecommunication, food and beverage, and toy industries. He also is an author in one of the leading German commentaries on EU trademark law and regularly publishes on EU trademark and design topics.

Mr. Hood is sought after by brand owners focused on building and protecting their brands and reputations through efficient trademark clearance and prosecution. He regularly advises clients on effective strategies to manage and monetize their trademark portfolios and has successfully enforced clients’ trademark rights in Canada’s Federal and provincial courts. His practice spans all aspects of trademark counselling, prosecution and litigation. He counsels brand owners through trademark selection, clearance and prosecution, as well as opposition proceedings, section 45 non-use, cancellation proceedings and invalidity expungement proceedings. He counsels many famous brand owners, from leading professional sports teams to popular social media platforms to renowned consumer electronic companies to famous fashion houses, in the enforcement and protection of their IP rights in Canada.

Mr. Wang's practice focuses on all aspects of China trademark law and extends to copyright, domain name, unfair competition and other IP related laws. With over 20 year experience, he has successfully represented both Chinese and foreign clients in protecting their brands worldwide. Since moving to New York in 2007, he mainly provides strategic advice to U.S. clients in trademark prosecution, enforcement and litigation in China.
Description
Different countries have different processes and requirements that brand owners must navigate in order to build brand portfolios and protect their brands. Most countries include distinctiveness as one of the essential requirements for registering a trademark or service mark. Under U.S. law, a trademark must either be inherently distinctive or have acquired a secondary meaning that distinguishes the goods and/or services prior to or during the examination of the federal application to obtain full protection. Marks may nevertheless be found to lack inherent distinctiveness after the required evidence is provided. For such marks--particularly descriptive and geographically descriptive marks, surnames, and trade dress among others--a showing of acquired distinctiveness can mean the difference between registration on the Principal Register, registration on the Supplemental Register, and abandonment of a federal application.
The challenge in the European Union is that a trademark must be or must have become distinctive in essentially all member states. Considering the variation in language and culture between EU countries, it can be difficult to show how consumer perceptions and market conditions in each of the countries supports a claim of EU-wide acquired distinctiveness. Additionally, in many non-U.S. jurisdictions, marks that are not inherently distinctive must acquire distinctiveness before their applications are filed. On the other hand, such jurisdictions may vary widely in their analyses and assessments of pre-registration use evidence. For example, the China National Intellectual Property Administration follows strict criteria, while Chinese courts will consider a non-exhaustive list of factors when determining if a mark has acquired distinctiveness.
Counsel for multinational companies face the challenge of seeking protection for marks around the globe. As a result, they must understand the different requirements for demonstrating distinctiveness and how to best plan to meet the requirements.
Listen as our authoritative panel of IP attorneys examines the requirements for demonstrating distinctiveness in different jurisdictions. The panel will compare and contrast the requirements and offer best practices for meeting those requirements around the world.
Outline
- What works and what doesn't to demonstrate acquired distinctiveness
- EU
- UK
- Canada
- China
- Acquired distinctiveness
- Treatment by respective courts
- Treatment by respective IP offices
- Best practices
Benefits
The panel will review these and other relevant issues:
- What strategies have trademark applicants used to demonstrate distinctiveness in different jurisdictions outside the U.S.?
- How have the courts of the respective jurisdictions treated proffered evidence of acquired distinctiveness?
- What best practices should counsel employ to demonstrate acquired distinctiveness outside the U.S.?
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