[E-trademarks] EU "Second Language" For Madrid Filing?

[Crane, Susan]

Using an obscure language only works if you are filing directly in the EU, because you have the language you file in, plus one of the five working languages of the EU – English, German, Spanish, French or Italian.  But when filing through Madrid with a US base application, the filing language will be English, so you need to select one of the other four.

I would choose the language of the country where you have the best working relationship with local counsel (and/or where the fees are the lowest) depending on your client’s priorities.

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>



From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of voyer--- via E-trademarks
Sent: Tuesday, February 18, 2025 1:24 PM
To: Oppedahl Carl <e-trademarks at oppedahl-lists.com>
Cc: voyer at keganlaw.com <daniel at keganlaw.com>
Subject: Re: [E-trademarks] EU "Second Language" For Madrid Filing?

EU Tm apps have two languages. For USA filers, Ejglish is typically one. If client is native in another supported language that might be the second. Gevers suggest, as I remember, one of their Belgium languages, less known, and thus likely to
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EU Tm apps have two languages.  For USA filers, Ejglish is typically one. If client is native in another supported language
that might be the second.  Gevers suggest, as I remember, one of their Belgium languages, less known, and thus likely
to encourage other parties to use english.  This top of mind—I’ve usually used an EU associate for EU tm apps,
I assume IB dropdown is on similar basis.
Daniel Kegan
daniel at keganlaw.com<mailto:daniel at keganlaw.com>


On Feb 18, 2025, at 12:39 PM, Sam Castree via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Dear List Mates,

My client filed a U.S. trademark application about 5 months ago, and now he wants to file in the EU as well.  I'm filing through the International Bureau to back-date our EU application to the U.S. filing date.  So far so good.  Now it's time to check the boxes for what jurisdictions we want to file on.  I see the box to indicate that we want to extend protection into the EU, but there's also a mandatory drop-down menu and an instruction "Please select second language."  Can someone please explain what this choice does, and what effect it will have?  Obviously, I've never dealt with this particular task before.  Many thanks in advance for your guidance.

Cheers,

Sam Castree, III

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

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