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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, December 14, 2021

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

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.

Faculty

Roberto Kunz-Hallstein
Partner
Dr. Kunz-Hallstein Rechtsanwälte

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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Michael J. Leonard
Partner
Fox Rothschild LLP

Mr. Leonard provides strategic counsel on the availability and adoption of trademarks as well as the management and enforcement of trademark portfolios in the United States and abroad. He also represents clients in opposition and cancellation proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and various U.S. district courts. Keenly adept at managing and enforcing domestic and international intellectual property rights, he is a go-to resource on trademarks, copyrights, and other IP-related issues for clients in the telecommunications, computer software and technology, entertainment and sports, pharmaceutical, chemical, food and beverage, publishing, scientific research, and apparel industries.

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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.

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?