Tag: Madrid

Tips for developing an efficient worldwide trademark application filing strategy

Share

So you’re launching a new product line worldwide. Or maybe you’re rebranding a division of your global business. Or perhaps you’ve recently conducted an audit of your trademark portfolio and noticed several gaps in coverage.

Regardless, you’re ready to file new trademark applications around the world ‒ and we’re sure you want to make these filings as efficient and cost-effective as possible.

One way to keep costs down is to take advantage of trademark application filing systems that cover multiple jurisdictions. These systems allow you to register a trademark in more than one country by filing only a single application.

Continue reading “Tips for developing an efficient worldwide trademark application filing strategy”

Trademark Modernization Act: Final Rules

Share

The USPTO recently issued its final rules to implement the Trademark Modernization Act, whose goal is to clear away unused registered marks and make the trademark registration process more efficient. Below, we highlight public comments regarding the implementation of the Act, as well as the final details regarding the implementation of the Act.

Continue reading “Trademark Modernization Act: Final Rules”

Trademark Modernization Act of 2020: Part 3

Share

The new ex parte expungement and reexamination proceedings, introduced by the Trademark Modernization Act, are intended to be efficient ways of removing improper trademark registrations from the register.

But will expungement or reexamination always be the best strategy for challenging a trademark registration?

Continue reading “Trademark Modernization Act of 2020: Part 3”

Trademark Modernization Act of 2020: Part 1

Share

The Nuts and Bolts of Expungement and Reexamination

You may remember our blog post here, discussing the Trademark Modernization Act of 2020, which became law at the end of last year.  To implement the Trademark Modernization Act, the United States Patent and Trademark Office (USPTO) has proposed changes to the trademark rules of practice, which we begin to explore in the following post.  Over the coming weeks and months, stay tuned for further commentary, insights and practice tips on these proposed changes!

According to Commissioner for Trademarks David Gooder, during a recent USPTO virtual roundtable event, “protecting the integrity of the US trademark register is, and will remain for some time, one of our top priorities.”  Keeping the register clear of improperly obtained trademark registrations helps ensure that legitimate businesses can register their marks with the USPTO, and enforce those rights against infringers.

Continue reading “Trademark Modernization Act of 2020: Part 1”

Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

Share

Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada?  After reading that question, are you wondering what on earth a Madrid Protocol application is?

Let’s take a step back.  The Madrid system is a mechanism that facilitates the registration of trademarks in multiple jurisdictions around the world.  One way to file trademark applications in multiple jurisdictions is to engage local counsel in each jurisdiction of interest and work with counsel to file individual applications.  By using the Madrid system, however, a trademark owner can file a single international trademark application with the World Intellectual Property Organization (WIPO), and designate one or more jurisdictions based on just this one application.

Continue reading “Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications”

Refresh Your Logo While Keeping Your Old U.S. Trademark Registration

Share

We are tickled pink when we get to work with trademark registrations that issued before we were born. ‎(We won’t say when that was.) It’s nifty to be the steward of a trademark that has stood the test of time and that may endure long after we’ve headed off to the Great Principal Register in the Sky (no Supplemental Register for us, no sirree).

But what if your old, venerable logo is due for some sprucing up? ‎Please don’t immediately assume that a logo refresh means that you will need to start over with a new trademark application and allow your old logo registration to lapse. You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn’t a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration! (Note: this won’t work for registrations obtained in the USA via the Madrid Protocol. Sorry.)

Continue reading “Refresh Your Logo While Keeping Your Old U.S. Trademark Registration”

Global Brand Protection – A 50,000 Foot View

Share

So you’ve protected your trademark in the USA – nice work!  But you have longer-term aspirations to take your business abroad.  What are some things you should be thinking about now, or actions you should be taking?

First, think about your long term brand goals.  Once your goals are clear, take steps to understand the costs of global protection, and make efficient tradeoffs between those costs and maximizing protection. Continue reading “Global Brand Protection – A 50,000 Foot View”