Secaucus, NJ asked in Trademark for Pennsylvania

Q: Need to file an international trademark, what is best course? Need trademark attorney.

Need trademark attorney. I already filed in US through USPTO and now want to file the same trademark internationally with I believe the World Intellectual Property Organization (WIPO). What is the best course of action? I am aware of the Madrid Protocol and can see general prices online.

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1 Lawyer Answer
Robert Kost
Robert Kost
PREMIUM
Answered
  • Pittsburgh, PA
  • Licensed in Pennsylvania

A: You've spotted the most expeditious route: file with WIPO for each of the countries in which you'd like your trademark rights to apply (you'll check which ones you want). For purposes of the WIPO filing, the European Union is treated as one country. However, the application will be submitted to each country individually, and each country will review the application independently. The individual country may initially refuse, causing you to hire counsel locally in that country. Also, unless there are other time pressures facing you, it is best to wait to see if your US trademark is granted, because acceptance in the WIPO designated countries is dependent on the US trademark being granted. Hope this helps. Best regards, Robert Kost.

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