[E-trademarks] Madrid Filings...?

Tue Oct 8 16:13:31 UTC 2024

Plus, in China you might consider getting local counsel to help create and
then file the trademark in Mandarin.  Although we’ve had mixed success (two
translations were both rejected for the same mark), there ARE 1.4 billion
potential consumers there…

Thanks,

Mark

Mark S. Kaufman

Kaufman & Kahn, LLP

Email:  kaufman at kaufmankahn.com

www.kaufmankahn.com

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*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Kevin Grierson via E-trademarks
*Sent:* Tuesday, October 8, 2024 11:52 AM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Kevin Grierson <kgrierson at cm.law>
*Subject:* Re: [E-trademarks] Madrid Filings...?

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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Partner

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  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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