Knowledgeable IP Firm Registers and Enforces Trademarks Abroad

Long Island attorneys help clients protect their brand worldwide

Online commerce makes it easier than ever for companies to do business around the world. For many firms, creating an international brand identity is critical to achieving global success. If you are engaged in business outside the United States, you should explore registering your trademark internationally so that competitors in other countries are prevented from capitalizing on your image and so that you develop an international identity. The New York intellectual property attorneys at Collard & Roe, P.C. in Roslyn are well versed in the rules and procedures associated with international trademarks. No matter what your specific needs entail, we have the insight and expertise to support you here or aboard.

Establishing trademarks in other countries through the WIPO

More than 100 countries are contracting parties to the Madrid Agreement, which covers the international recognition of trademarks. This system is administered by the World Intellectual Property Organization (WIPO). Our trademark attorneys can guide you through each stage of the registration process, including:

  • Establishment of a domestic mark — Before registering a trademark worldwide, you must first do so in your home country. For American businesses, this means filing for what is referred to as a basic mark with the United States Patent and Trademark Office (USPTO).
  • Publication and registry by WIPO — Once a national authority such as the USPTO certifies a mark, it is forwarded to WIPO for recording in its International Register and publication within the Gazette of International Marks. It is important to remember that this alone does not establish trademark protection in the countries where you would like certificates sent.
  • Review by national intellectual property authorities — Countries typically have between 12 and 18 months to examine the merits of a trademark application. Once decisions are rendered, WIPO records the results and notifies the applicants.

Our firm delivers comprehensive counsel to large and small businesses seeking to build their brand both inside and outside of this country. Whether you need assistance looking up existing marks, determining if your logo is sufficiently distinguishable from a mark that is already registered or understanding the specific benefits of trademark protection in a given country, Collard & Roe, P.C. is ready to help.

Collard & Roe, P.C. works closely with a network of international firms for U.S. filers to maintain client’s marks in foreign countries. Each country has developed their own timetable and requirements for maintaining trademarks. Collard & Roe’s trademark team is knowledgeable in the details of each country’s requirements. Our team will explain the proof of use requirements and fee structure of countries throughout the world.

Filing U.S. registrations based on the non-U.S. trademarks

Collard & Roe, P.C. has extensive experience in filing U.S. trademarks based on marks filed in other countries or marks filed in other jurisdictions under the Madrid Agreement.  Throughout our over 55 year history, Collard & Roe, P.C.’s experienced attorneys have worked with clients in Europe, Asia, Australia, Latin America, and Africa to protect their marks in the United States. We work closely with our international clients to conform their marks to U.S. standards and to satisfy the use requirements to maintain U.S. trademarks.

Defending and protecting international trademarks

Should you learn that someone abroad is infringing upon your trademark right, we will investigate the situation promptly. If the profitability or reputation of your business is threatened by this improper use, we will outline the options available within that particular jurisdiction. With our established network of foreign associates, we will work with local counsel to ensure you receive the best representation to protect your rights.  The problem might be resolved through a cease-and-desist letter or a short negotiation, but if more formal action is necessary to defend your brand, our knowledgeable attorneys can give you the information you need.

Contact a New York attorney for a consultation about an international trademark

Call the attorneys at Collard & Roe, P.C. at 516-365-9802 or contact us online to schedule a consultation regarding seeking or enforcing international trademark protection.