Trademark oppositions in the United States are, on average, the most expensive in the world.  So what does it take to protect and enforce brands in other countries?

Over the coming months, some of the world’s leading trademark professionals will be sharing with us insight on the trademark opposition process in their own jurisdictions.   By doing so, American companies will be able to better gauge what is needed to protect their valuable brands on a global basis.  This series of useful posts will include brand enforcement guidance and tips such as:

  1.  Case assessment.   Prior to bringing a trademark opposition, it is important to first determine the strength of one’s own trademark rights.  This analysis depends, in part, on the legal requirements for priority, standing, and likelihood of confusion that exist in each country.
  2.  Duration and costs.   Some countries have streamlined opposition processes that save clients both time and money.  Others are similar to the U.S. system and could result in protracted litigation and increased fees.  We’ll find out which world trademark jurisdictions offer the most value for brand protection.
  3.  Dispute resolution alternatives.   INTA’s Trademark Mediators Network is a non-litigation alternative to contested trademark proceedings. Currently, there are over 150 approved INTA mediators across the globe, each with unique training and insight to help litigants achieve their brand protection goals in a collaborative manner.  We’ll hear from our experts whether mediation is used in trademark disputes in their countries, and if so, in what types of cases.

In addition to providing practical advice, each guest commentator will share his or her professional background and experience.  We hope that our world trademark opposition overview will assist U.S. companies and inhouse counsel to make informed decisions about their international trademark portfolios.

To international trademark associates:   If you would like to be considered as a guest column commentator, please contact the blog publisher.

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Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America