International Trademarks

As with U.S. prosecution, The Rapacke Law Group does not treat foreign trademark filings as routine administrative matters. Rather, we look at the nature of the mark, the U.S. application, U.S. or foreign search results, and potential disputes, and discuss future plans for the mark with the client. We can then develop appropriate foreign filing strategies in terms of the form of the mark and the scope of the goods or services.

We have nurtured a network of trademark lawyers and agents around the world to assist with foreign trademark filings. We select foreign counsel based on their ability to provide the high level of service our clients expect. If a client prefers to maintain its existing relationship with a firm, we are happy to comply. Upon receipt of a communication from foreign counsel, we report the matter to the client along with a suggested strategy. We carefully review the counsel’s recommendations and work out a response or opposition strategy that is persuasive. We also look at whether a strategy comports with that taken in other countries and, if not, whether a departure from prior practice is warranted and the impact of doing so. We have extensive experience with international clearance projects. We present search results in organized and streamlined formats that are easy to understand, contain concise summaries, and include specific advice on recommended actions. In particular, we provide practical guidance and risk analysis, because many foreign counsel are highly conservative and identify numerous “problematic” marks. We analyze the “problematic” marks and separate them into categories of real problems and potential problems. We further recommend precise steps to take to address any potential problems (e.g., negotiate consent agreements, acquire rights).