[E-trademarks] Madrid Filings...?

[Tim Ackermann]

I agree with Kevin about China / Madrid. You're better off getting local
counsel. It might not have been the case some time ago, but I think so now.
On the costs, don't neglect the USPTO certification fees (which do not show
up on the WIPO estimator):
7.6(a)(1)(i)-(ii) Certifying an international application based on a single
basic application or registration, per class $100.00 7901 $200.00 6901
7.6(a)(2)(i)-(ii) Certifying an international application based on more
than one basic application or registration, per class $150.00 7902 $250.00
6902
Tim Ackermann
The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
F:  214.453.0810
W: ackermannlaw.com
O: 1701 W. Northwest Hwy. Ste. 100
     Grapevine TX 76051


On Tue, Oct 8, 2024 at 10:54 AM Kevin Grierson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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**​**​**​**​*
>
> |
>
> Partner
>
> [image: Mobile:]
>
>   757-726-7799
>
> [image: Fax:]
>
>   866-521-5663
>
> [image: Email:]
>
>   kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law*
>
>
>
> *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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>
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