Presenting a live 90-minute webinar with interactive Q&A Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Directly in Foreign Jurisdiction TUESDAY, FEBRUARY 28, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Olivia Maria Baratta, Partner, Kilpatrick Townsend & Stockton , Atlanta Sheila Fox Morrison, Partner, Davis Wright Tremaine , Portland, Ore. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
Tips for Optimal Quality FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-570-7602 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail sound@straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again.
Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar. A link to the Attendance Affirmation/Evaluation will be in the thank you email that you will receive immediately following the program. For additional information about continuing education, call us at 1-800-926-7926 ext. 35.
Program Materials FOR LIVE EVENT ONLY If you have not printed the conference materials for this program, please complete the following steps: Click on the ^ symbol next to “Conference Materials” in the middle of the left - • hand column on your screen. • Click on the tab labeled “Handouts” that appears, and there you will see a PDF of the slides for today's program. • Double click on the PDF and a separate page will open. Print the slides by clicking on the printer icon. •
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Olivia Maria Baratta | Kilpatrick Townsend & Stockton LLP mbaratta@kilpatricktownsend.com Sheila Fox Morrison | Davis Wright Tremaine LLP sheilafoxmorrison@dwt.com 5
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Pros and Cons of filing under Madrid Protocol A. Filings PROS – Filings are easy – Single document filed with the USPTO check the box! – No POAs – Feedback on refusals/oppositions within 12 or 18 months 6
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing 7
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing CONS – Details in your IR are identical to your US app • Can’t take advantage of defensive registration • No local advice on strategy • Result may be very limited protection (e.g., China) • Can be OK for some goods/service (e.g. Wine – there is only one subclass in China) 8
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing B. Renewals PROS – Cheap! One filing can cut the cost of renewal by thousands of dollars CONS – Cannot amend marks or update logos 9
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing C. Assignments PROS – Easy! • Single filing for all countries CONS – Slow! • Recordation process is slow and it is difficult to reach people at WIPO to get information or confirmations • Limits on assignees; must be in a country that is a signatory 10
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing D. Replacement Trademark owners with pre-existing national trademark registrations in Madrid Protocol Contracting Parties can Request an Extension of Protection in those Contracting Parties to "replace" the national registration, and still retain all of the filing dates and prosecution history with regard to the prior national registration. PROS – cost and time savings associated with renewals and recordation of ownership information CONS – details of national applications are rarely consistent, so it may be difficult to manage the logistics 11
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing E. Multi-class Registrations PROS – Easy! CONS – Costs later incurred. • If an IR application covers multiple classes and designates a jurisdiction that does not permit multiclass filing (e.g., Mexico), the national trademark office will review the application and divide it, requiring payment of additional fees to cover the additional classes. 12
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing F. Dependency Period For a period of five years from issuance of IR, the IR is “tied” to the home registration PROS – None! CONS – If the home application does not register, the rest of the applications may fail – Subject to “Central Attack” 13
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing F. Dependency Period – Can cure by “transforming” the IR to national applications – But must pay filing fees so you double the costs 14
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Pros and Cons of filing National Applications A. Scope of identification of goods/services PROS – Easily tailored to address business needs or potential risk factors – Can address specific trademark office requirements (China, subclass goods) CONS – Possible lack of uniformity; no centralization 15
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing B. Amendments PROS – Easy to address on a jurisdiction-specific basis, thus resulting in fewer objections/office actions CONS – None 16
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing C. Translations PROS – Ability to address nuances, dialects, local meaning CONS – None 17
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing D. Renewals PROS – None CONS – Lack of centralization, additional time and cost 18
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing E. Use of Local Counsel PROS – Advice, expertise, experience CONS – Cost 19
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Additional Considerations – Don’t use for highly descriptive marks – Don’t use when you think you might benefit from local counsel advice – Use it for “quick and dirty” protection. You might start with to get your “foot in the door” and circle back for additional localized filings if necessary 20
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Additional Considerations – Con’t – Use it when you don’t need/want a lot of defensive protection • narrow identification • looking for “freedom to operate” protection in a country and not strong offensive protection – Good for “see what sticks” protection – Don’t use it for house marks, or critical trademark 21
Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Additional Considerations – Con’t – Great for sub-brands, tag lines and other lower priority marks • Note that tag lines are not always protectable – Don’t use for certification or collective marks – Has the designed jurisdiction implemented the necessary legislation? 22
Recommend
More recommend
