When a trademark extends beyond the borders of the United States, it becomes necessary to seek registration in foreign jurisdictions to protect the mark internationally. Crain Caton & James’s Intellectual Property Practice Group provides guidance in identifying the relevant countries for registration and leverages its extensive network of foreign associates to secure and uphold trademark rights in those countries.
International trademark registration can be pursued through two primary avenues: direct national applications or the Madrid Protocol. A national application involves filing directly in each country of interest, and may, depending on timing, allow the applicant to claim the priority date of a corresponding U.S. application. Alternatively, the Madrid Protocol offers a streamlined process for obtaining an “international trademark registration,” which can then be taken to member states for review and registration. Under the Madrid Protocol, the application is filed with the U.S. Patent and Trademark Office, which then submits it to the World Intellectual Property Organization (WIPO). WIPO reviews the application and, if all requirements are satisfied, issues an international registration before forwarding the application to the designated countries for their individual consideration and registration.
Areas of Focus
- AI Protection
- Appeal of Judgments Regarding Intellectual Property
- Copyright Litigation
- Cybersquatting Litigation
- False Advertising Litigation
- Foreign Patent Prosecution
- Foreign Trademark Prosecution
- Intellectual Property Assets in Family Hands
- Intellectual Property in Corporate Agreements
- Intellectual Property in Mergers & Acquisitions
- Intellectual Property Ownership from Employees & Independent Contractors
- Litigation With Intellectual Property
- Patent Administrative Challenges
- Patent Litigation
- State Trademark Prosecution
- Trade Secret Litigation
- Trade Secret Protection
- Trademark Administrative Challenges
- Trademark Litigation
- U.S. Copyright Protection
- U.S. Patent Prosecution
- U.S. Trademark Prosecution
