July 29, 2021 In Trademark Law

US Trademark Registrations and Madrid Protocol Registrations

In the US, trademark registrations are a most serious matter. In recent decades, the same holds true for many other countries, including Israel, especially since registration in multiple countries via the Madrid Protocol, can prevent trademark counterfeiting. The law that governs all pertaining procedures in the United States is the federal Trademark Act, which is also called the Lanham Act.

US Trademark Registrations and Madrid Protocol Registrations are a Must

Any word or symbol that people are taught to equate with goods or services of a particular manufacturer or provider is a trademark. Trademark law has been enacted in first world countries, in order to prevent trademark fraud and counterfeit, i.e. to avoid confusion and scamming of customers and to preserve the good names of businesses by having their marks linked only to the trademark owners.

What is Trademark Counterfeiting?

When a registered trademark is put on the packaging or advertising for a product or service that is unrelated to the trademark owner, and therefore not one of his, her, or its legitimate goods, that rogue trademark is counterfeit. That is punishable by law in countries that protect the rights and integrity of the trademark owner, be it an individual or a company.

  • If uncontrolled, trademark owners stand to lose millions of dollars from lost sales, court and attorney fees and tarnished reputations because of counterfeit marks on inferior products.
  • Many consumers do not put products under a microscope and if a well-known product’s design is copied, as well as the colors, a lot of people will confuse it with the superior product and original manufacturer.
  • The confusion caused in product identification, associated with a particular brand, is worth a mint to the perpetrators and can amount to insurmountable losses to the legitimate owner of the mark.

How does the Madrid Protocol Help?

The Madrid Protocol enables trademarks that are already registered in their owners’ native countries that are members of the Protocol, to also register their trademarks in any and all other member countries. The trademark owner in Israel, for example, can register his, her or its trademark in the US, with a most serious caveat that it must, absolutely and unequivocally be filed by an attorney who is licensed to practice in the United States. The Israeli trademark owner, however, does not have to travel or set up his, her, or its business in the US or any other country and can pay for foreign registration, all in one currency and the process can be simplified to one set of fees. Costing will depend on whether the trademark is in black and white, or color.

You Will Need a Lawyer

You will have to get a top-notch lawyer. In fact, no one can file under the Madrid Protocol in a foreign country, say the US, without a lawyer who can reside in your country but must be licensed to practice law in the United States. For US trademark registrations and Madrid Protocol registrations, your Israeli lawyer will be indispensable and you might need him or her for future litigation that could arise.

David Page is a US-Israeli lawyer, licensed in both Israel and the United States, doing Trademark Law for Israeli clients. He therefore is the lawyer you want to represent you. He will leave no stone unturned when handling your Trademark Law affairs in Israel.

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