Global Trademark Management

We Protect Our Clients’ Brands on a Global Scale

For companies that sell products outside of the United States or have retail locations abroad, registering with the U.S. Patent and Trademark Office (USPTO) is not enough. Each country has its own trademark protection laws; and, while there are ways to register trademarks in multiple jurisdictions with a single “international application” (i.e. under the Madrid Protocol), determining when, where and how to file is not necessarily as straightforward as it may seem.

At Peretz Chesal & Herrmann, P.L., we make the global trademark management process as simple and straightforward for our clients as possible. We handle trademark registration applications worldwide, working with local counsel as necessary for both acquisition and enforcement. Whether you need to secure trademark rights in a single country or in multiple jurisdictions around the world, we can help, and we can monitor your global trademark portfolio on an ongoing basis to ensure that your international rights are secure.

Global Trademark Clearance and Registration

Our trademark attorneys work with clients on a daily basis to protect their brands across the globe. In addition to registering our clients’ marks with individual countries’ intellectual property offices, we also routinely file and prosecute multi-jurisdiction registration applications pursuant to:

• The European Union Trade Mark (EUTM) System
• The Paris Convention
• The Madrid Protocol
• The African Regional Intellectual Property Organization (ARIPO) System
• The African Intellectual Property Organization (OAPI) System
• The Andean Pact

Following the initial application process, there are additional steps involved in maintaining exclusive trademark rights abroad. From filing declarations and renewals to opposing third-party registration applications for confusingly-similar trademarks, we carefully monitor our clients’ international registrations to protect the value and exclusivity of their marks.

Global Trademark Monitoring and Enforcement

While enforcing trademark rights in the United States presents its own challenges, managing a global trademark portfolio requires unique resources and relationships with trusted local counsel who can take legal action when necessary to stop infringers from siphoning your company’s hard-earned goodwill. With a trademark practice that is truly global in nature, we have the resources and relationships necessary to give our clients the confidence they need to market their brands internationally.

Due to the differences in international trademark registration systems and the fact that trademark rights are country-specific, companies considering expansion into international territories should strongly consider prioritizing the trademark selection and registration processes. Particularly in circumstances where a trademark is available in one jurisdiction but not another, companies will need to weigh their options with regard to adopting multiple trademarks, choosing a different mark or challenging the relevant third-party registrations. We can assist with these types of decisions, and we can help you develop a strategic plan for moving forward.

Speak With a Global Trademark Lawyer in Confidence

To speak with one of our attorneys about your company’s global trademark management needs, please call (305) 341-3000 or inquire online. With offices in Miami, FL, we represent local and regional companies throughout Florida as well as across the United States and worldwide.