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“The Importance of Growing an International Trademark Portfolio”

Franchise Law Insider By Jonathan Hudis and Heather S. Stutz

In today’s global economy, it is increasingly important for companies to strategically develop and maintain an international trademark portfolio. Effective trademark portfolio management is a key factor in maintaining the rights and value of an company’s intellectual property. An effective portfolio management strategy includes determining which marks are critical to the company’s business goals, and developing a strategy that dictates how, when, and where the company will acquire its trademark rights.

The timing of obtaining trademark protection on a global scale is vital. Some countries, such as the United States, follow a common law “first-to-use” system wherein trademark rights are acquired primarily through being the first to use the mark. Most other jurisdictions employ a “first-to-file” system wherein priority of trademark rights is obtained only by filing an application to register the mark. Accordingly, the timely filing of applications to register marks in first-to-file jurisdictions is essential in order to avoid losing priority.

One very effective means of establishing priority in international jurisdictions is to take advantage of the Paris Convention provision that provides for the filing of an application to register a trademark in foreign jurisdictions on the basis of a United States application. If the foreign application is filed within six months after filing the corresponding United States application, the effective date of protection (that is, the priority date) under any ensuing registration will be the filing date of the U.S. application. In general, trademark protection is on a country-by-country basis. However, there are several international treaties that allow for relatively wide-scale and cost-effective international trademark protection. Examples include the Community Trademark (CTM) registration, which covers all twenty-five member countries of the European Community, and the Madrid System, which allows for the filing of a single application to obtain protection of a mark in ninety-six member countries. The effective use of such treaties can play an integral role in the development and maintainability of an international trademark portfolio that aligns with an organization’s business goals in a cost-effective manner.

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