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Filing Without Borders
Original Program Date :


What is "Filing Without Borders"?

If your clients are doing business beyond the United States, it is likely you have been asking about trademark protection in other countries. It is also likely that you have been nervous to take on foreign filings for fear of getting it wrong or messing something up. On top of that, terms like WIPO, Paris Convention, and Madrid Protocol can be so confusing, especially if you're new to international filings.

On the other hand, it is an area of trademark practice that is definitely worth learning. Not only will being able to offer foreign filings add value to your current client relationships, it can increase your revenue (!!) by making you more marketable to future potential clients who are looking for that skill set in the trademark attorney with whom they choose to work.

The Filing Without Borders training will give you a foundational knowledge of foreign filings and will be led by Erik Pelton on Monday, Dec. 18, 2023 at 4pm EST/1pm PST. 

Below is a general list of what will be covered, but please feel free to bring your questions for the live Q&A afterward as well. The estimated time for the class is 75 minutes.

And yes...
✓ It will be recorded
✓ You have lifetime access
✓ There will be time for live Q&A
✓ CLE credit is offered (woohoo!)

Agenda:

  • Who should consider applying internationally
  • Where to consider filing internationally
  • What is WIPO?
  • What is the Madrid Protocol?
  • Key differences between Madrid Protocol and national filings
  • Trademark classes in different countries
  • First-to-use vs. first-to-file jurisdictions
  • Use requirements in different countries
  • What is an “effective priority date” under the “Paris Convention”?
  • Issues that arise in Madrid Protocol filings
  • How to estimate costs and price International filing services
  • Managing an international portfolio
  • International renewals

Erik Pelton, Erik M Pelton & Associates, PLLC

Erik is all about energy, when he’s representing clients; speaking at a conference; teaching trademarks at Georgetown University; or leading the trademark clinic at Howard University, where for four years he guided students working with pro bono clients. Through it all, Erik draws on his superpower – the ability to distill complex legal principles and procedures into digestible, understandable, and actionable concepts. Erik’s talent for clarity allows him to not only paint a clear picture of the why, but also the what’s next as he explains options and possible paths forward for clients as they build and grow successful brands.

 

After cutting his teeth as a trademark examiner for the USPTO, Erik has, in the years since, grown his trademark law practice with the enduring ideals of customer service and affordability. Today, with more than 4,000 client trademark registrations to his name, as a published author, creator of an app for trademark practitioners, and host of the “Tricks of the Trade(mark)” podcast, you won’t find anyone else who will care brands and trademarks as passionately as he does.

 

Erik lives in Falls Church, Virginia, where he also provides pro bono work for veteran-owned businesses.


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