Top Twelve Tips for Avoiding the Foreign Filing Deadline Crunch


Our corner of the IP world is chock-full of minutiae – powers of attorney, legalized declarations of intent to use, merger certificates, you name it.  So how do we manage all those details and still meet dozens of filing deadlines every week?

Very carefully.

Seriously, here are a few tricks we use to tackle foreign trademark filing and renewal requirements. These tactics help us meet deadlines with time to spare, and without having to go back to our clients multiple times to request additional documents. We’re all about efficiency!

When we’re working with local counsel, some of the first questions we ask are:

  1. Can you use the signed power of attorney you already have on file [option: even if the client’s address has changed]?
  2. How much time will likely pass before [the application matures to registration/the renewal application is accepted/we receive confirmation of the recordation of the assignment]?
  3. What fees and expenses will be incurred from start to finish?
  4. What documents and information will you need to support the application/renewal/recordation of assignment? By when will you need them?
  5. Before our client signs, will you please review our template assignment document to confirm that it is acceptable – or do you have a form we should use?
  6. Are any extensions of the filing deadline available, and at what cost?
  7. Is notarization or legalization truly necessary? (Surprise! Sometimes, the answer is “No”!)
  8. Can plain PDF copies of the document be used to meet the deadline, with the original notarized/legalized documents to be filed later? Is it strictly necessary to supply original documents?
  9. Can you renew the registration in the name of the current owner now, and update the ownership later? (Don’t try this at home, folks –  it won’t fly in the USA.)
  10. Can local counsel or US counsel sign the document on the client’s behalf?
  11. Can I attach a US notarial certificate to a photocopy of a document, to establish that the photocopy is a true copy, and then legalize that combined document? (This is a personal favorite. It’s like a magic wand for making lost original documents reappear!)
  12. What other work-arounds can you suggest to help meet the deadline at minimal expense to our client?

Using these questions early on in the process has proven to be a real time-saver.  Saved time = saved money = happy trademark owner.  What’s not to like?

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.


About the Author: Jennifer Dean

Jennifer Dean is a leading trademark lawyer who helps companies establish, protect and promote their brands in the United States and globally. Clients entrust her with intellectual property portfolios comprising thousands of trademark applications and registrations, relying on Jennifer’s extensive experience navigating the intricacies of international brand management. Her knowledge of clients’ industries and careful monitoring of the marketplace enables her to act swiftly to avert competitors’ efforts to launch confusingly similar brands.

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