International Trademarks

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.

Every in-house counsel knows the importance of protecting his or her client’s trademark portfolio from potentially confusingly similar trademarks.  So how do the best in-house counsel put their limited legal budgets to good use when considering when (or when not) to file a trademark opposition?

To quote the knight in Indiana Jones and The Last Crusade: they “choose wisely.”

Here are some tips on how to execute a simple and effective, U.S. trademark portfolio protection strategy.

Continue Reading Trademark Opposition Strategies for In-House Counsel