Protecting U.S. Trademarks Abroad

U.S. companies facing trademark challenges in international markets have a trailblazing advocate in Holland & Knight. Our Intellectual Property team established the first industry group to compile a "report card" on countries that fail to adequately protect trademark rights – and the Office of the United States Trade Representative (USTR) is listening.

Many nations have laws and practices that make it difficult for U.S. businesses to register trademarks or prevent the piracy or counterfeiting of their brands. U.S. companies also operate in countries where the trademark regimes are simply underdeveloped. These are among the trade problems addressed each April by the USTR in its Special 301 Report, which describes the global state of intellectual property rights protection and enforcement. Although the USTR primarily employs diplomacy to try to remedy the problems it identifies, it also uses its report to launch dispute settlement proceedings at the World Trade Organization and to identify countries whose IP regimes are considered of particular concern.

Although trade groups present the USTR with submissions for the Special 301 Report regarding patent and copyright issues, as well as certain targeted trademark concerns such as anti-counterfeiting, no organization had offered a comprehensive submission on trademark concerns until last fall, when Holland & Knight formed a Special 301 Ad Hoc Trademark Working Group – a collaborative of U.S. companies and organizations that have had difficulty protecting their trademark rights abroad. The group's growing membership includes Fortune 500 companies and other well-known brand owners from a wide range of industries.

Led by Holland & Knight Partner Paul Kilmer, the Special 301 Ad Hoc Trademark Working Group submitted what Mr. Kilmer calls a "World Trademark Report Card" detailing, country by country and issue by issue, the statutory, administrative, judicial and other roadblocks faced by U.S. trademark owners – including slow administrative proceedings and processing of trademark applications, non-adherence to important trademark treaties, failure to implement trademark registration systems and lack of public access to records. During a public hearing in which Mr. Kilmer described the group's findings – which were peer reviewed by foreign counsel in the countries discussed – the USTR praised them as a "blueprint" for discussion of the topic and indicated that they would be taken into account in this year's Special 301 Report.

The 301 Trademark Working Group is already playing a role in U.S. trade policy and global intellectual property protection. Its contributions will be used by U.S. trade negotiators in their dealings with foreign governments on trademark protection issues. In addition, members of the group now have an opportunity to meet with the International Trade Administration (ITA) of the Commerce Department to discuss their specific concerns. On behalf of the group, Holland & Knight will likely provide updated findings for the USTR's 2015 report.

Holland & Knight's Intellectual Property Group features a Trademark Protection and Prosecution Team with the experience and resources required to effectively handle all trademark-related matters. Our team advises clients on how best to integrate intellectual property law protections into their business strategies so they can effectively pursue counterfeiters and diverters and prevent the illegal distribution or use of their products. The firm also works with a comprehensive network of international counsel in more than 180 nations and other jurisdictions where trademark registrations may be obtained, to help provide our clients with worldwide protection.