Worldwide Trademark Clearance And Registration

Trademarks are territorial, meaning that rights in a trademark are limited to the particular country in which it is registered or used, or, in the case of the European Community Trademark, to the member countries of the EU. Multinational businesses therefore have little choice but to register and maintain their marks in every jurisdiction where they do business.

In today's global economy, though, it is not just multinational corporations that need to think about international trademark protection. When any company puts a website on the internet, its trademarks are instantly accessible everywhere in the world. Fortunately, that alone does not mean that registration of such trademarks is required everywhere in the world, but it does mean that it is much easier for people in other countries to view and copy your mark. Even if you are a purely domestic business, you may not be excited about a profiteer registering your distinctive mark in other countries in order to "free ride" as your mark develops reputation in those countries, through the internet and otherwise. And if you ever do consider entering an overseas market, you might be very frustrated to learn, especially in so-called "first to file" countries, that such a pirate has obtained a prior registration and can now absolutely block you from taking your primary brand with you.

We are well equipped to assist companies facing such issues.

  • We have experience in formulating global trademark strategies, designed to work as a component of a broader business strategy, and intended to produce a rational and cost-effective approach to securing international trademark protection.

  • We have hands-on experience with the various available "watch" services, and can help select those that will be most effective in giving advance notice when someone else has applied to register the client's mark, or one closely similar to it, in another country.

  • We maintain a specialized computer trademark docketing system to track all information related to trademark applications and registrations worldwide, including the many dates and deadlines involved in registering and maintaining trademarks. This allows us to provide clients with detailed customized reports of all information relevant to their trademark portfolio.

  • Perhaps most important, we have established working relationships with experienced trademark practitioners in every part of the globe. On-the-ground support is required to clear and register marks in another country or when any other sort of trademark issue arises overseas. Through our participation in INTA as well as our first-hand experience, we are able to direct clients to the most effective - and cost-effective - practitioners in any jurisdiction.

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© 2001, 2003 Enns & Archer LLP
• Main Offices: (336) 723 5180 • Fax: (336) 723 5181
939 Burke Street Winston-Salem, NC 27101


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