[E-trademarks] Madrid Filings...?

[Kevin Grierson]

If you have a pending US application, the filing process is easy and quick.  The response times can vary dramatically by country.  First, the application goes to the IB for review, then it is sent on to the designated countries.  Depending on whether you get a notice of irregularity from the IB, the initial review process generally takes a month or so.

From there, the specific countries you designate have to review the application.  Some are pretty quick—the UK and Australia come to mind.  Some are slow—countries have up to 18 months to review, and Canada usually takes up that full time (which is still a lot faster than filing there directly).

It’s also worth noting that in some countries you are pretty much guaranteed a refusal—China comes to mind.  I have had several clients use Madrid for filings there, but we’ve never gotten a successful registration there via Madrid.  If the client wants a registration there we generally recommend using local counsel.

Kevin Grierson​​​​
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Tuesday, October 8, 2024 11:31 AM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: [E-trademarks] Madrid Filings...?

EXTERNAL EMAIL
Greetings, List Friends,

I'm about to file an application for a U.S.-based client, and they're potentially interested in filing in several foreign countries, as well.  (I don't think that they need it, and they're getting bad advice from a third party, but that's a separate issue.)  I've dealt with Madrid filings maybe once before ever, and that was a while ago at a different firm.

Anyway, I'm trying to put together a rough cost estimate (or range of costs) for the client.  I've already checked the Madrid fee calculator, and I'm about to send over a breakdown of the filing fees.  That's where most of my cleints say, "You know what, never mind."  I understand that things will probably depend quite a bit on which countries we apply to, but I would appreciate it if anyone can give me a quick breakdown of likely steps and overall time that goes along with this entire process.  Apologies if this is far too complicated a request for an e-mail.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

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