Protecting Trademarks Abroad: Madrid System vs. National Filing Directly in Foreign Jurisdiction

Few U.S.-based lawyers know more about global trademark strategies and managing global trademark conflicts than Ms. Jacobson, who has searched, cleared for use, and prosecuted for registration thousands of trademarks of all types globally. She has also litigated and defended hundreds of international opposition and cancellation proceedings as well as infringement actions around the world. Ms. Jacobson registers and defends design patents and industrial designs in various countries, including those protected by the Hague Treaty, as well as those filed nationally. She has also advised on dozens of acquisitions and divestitures in which the trademark and copyright assets were either the primary or crucial aspect of the overall transaction. Ms. Jacobson is a frequent lecturer at seminars arranged by legal trade associations such as the AIPLA and INTA, explaining to U.S. practitioners how the Madrid Protocol works, and chaired the INTA Subcommittee on the Madrid Protocol.

Ms. Kalamaras has spent nearly 30 years working for some of the world’s most beloved brands in more than 150 countries and for clients in diverse industries. Since founding her firm in 2018, she now assists small and medium-sized businesses identify, register, protect and commercialize their brands both in the U.S. and abroad. Ms. Kalamaras has educated over 3,000 lawyers on four continents on various trademark topics, including: IP Law for the Corporate Lawyer, Anti-counterfeiting Strategies, How to Conduct a Trademark Search, How to Respond to IP Infringement Through Online Platforms, How to Be an Effective Practitioner at the USPTO, SCOTUS IP Term in Review, and Responding to Trademark Office Actions at the USPTO.

Mr. Kunz-Hallstein practices in all fields of intellectual property, especially in trademark prosecution and litigation as well as portfolio management.