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Presenting a live 90-minute webinar with interactive Q&A

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

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUESDAY, FEBRUARY 28, 2017

​ Olivia Maria Baratta, Partner, Kilpatrick Townsend & Stockton, Atlanta Sheila Fox Morrison, Partner, Davis Wright Tremaine, Portland, Ore.

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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

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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

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Protecting Trademarks Abroad: Madrid Protocol vs. National Filing

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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)

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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

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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

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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

• f ownership information

CONS

– details of national applications are rarely consistent, so it may be difficult to manage the logistics

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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.

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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”

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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

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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

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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

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Protecting Trademarks Abroad: Madrid Protocol vs. National Filing

C. Translations

PROS – Ability to address nuances, dialects, local meaning CONS – None

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Protecting Trademarks Abroad: Madrid Protocol vs. National Filing

D. Renewals

PROS – None CONS – Lack of centralization, additional time and cost

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Protecting Trademarks Abroad: Madrid Protocol vs. National Filing

E. Use of Local Counsel

PROS – Advice, expertise, experience

CONS

– Cost

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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

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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

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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?

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