Managing global trademark portfolios requires working with cross-border teams.  Heilbut LLP is well equipped to handle trademark prosecution in the United States and to act as the global trademark manager for our clients.

With our team’s fifty combined years of managing trademarks, we have well established relationships with counsel in countries all over the world.  These relationships are incredibly important when managing an international trademark portfolio.  We rely on foreign counsel to provide their opinion on searches, to tweak goods and services so that they cover the widest description of goods and services and remain acceptable by their local Trademark Office, and to provide their recommendations on overcoming refusals, third-party objections, and much more.

Here are some things to keep in mind when working with foreign counsel:

BE AWARE OF THE TIME DIFFERENCE

Foreign counsel’s work day may have ended when yours began. You may not receive a response to the urgent email that you sent today.

Your “deadline” may actually be the day before in the U.S. when the particular jurisdiction is 12 hours ahead.

International holidays can fall when you least expect them and span multiple days.

ALWAYS ALLOW FOR EXTRA TIME

Local counsel may need additional information as they begin work.

Some jurisdictions have additional requirements such as local notarization of the document so they will need several days or weeks once they receive the document to complete the full requirement.

Documents may take days or weeks to be delivered in foreign jurisdictions.

Legalization of documents for specific jurisdictions can take several weeks to complete.

Different jurisdictions have different holidays and weekends.

PAY ATTENTION TO LOCAL DOCUMENT REQUIREMENTS

Each jurisdiction has different document requirements. Some need to be notarized, some need to be legalized, some require original documents, while others may accept scanned documents.

FOREIGN COUNSEL WILL NOT HAVE KNOWLEDGE OF YOUR TRADEMARK MATTERS OUTSIDE OF THEIR JURISDICTION

This includes eligibility for priority claims, agreements with other parties, assignments or mergers, and information that may be required to overcome refusals.

Local counsel will not claim priority to your first filed application date if you do not instruct them to do so.

Local counsel will not have information on any agreements that you have with a third party or any assignments or mergers that may need to be recorded against the trademark.

Refusals in certain jurisdictions may require that you gather evidence of acceptance of the mark in other jurisdictions.

KEEP TRACK OF DEADLINES

While working with dependable local counsel is crucial to managing a global trademark portfolio,  it is also important to keep track of deadlines and next steps as the global portfolio manager.

Foreign counsel may send reminders on maintenance deadlines, but do not always do so.  Many local firms do not assume responsibility for maintenance deadlines and request that you docket the next due date as the client’s relationship team.

While working with cross-border teams can be challenging, keeping these tips in mind can prevent issues down the road.  A good global trademark manager will take these factors into consideration and guide you though all of the necessary steps and requirements, docket and deadline management, and review your portfolio holistically.