Potomac Law partners Julia Anne Matheson and Janet Satterthwaite recently authored an article for World Trademark Review (WTR) titled, “Why Madrid may not be your best strategy in the US.”
Noting that their foreign clients often use the international registration system for extensions of protection in foreign jurisdictions, Matheson and Satterthwaite point out that extending an international registration into the U.S. may not be the best choice.
In the article, they outline the following: (1) problems common to all US applications based on foreign rights and (2) problems specific to Madrid including retaining US counsel, maintenance renewals, change of ownership issues and the unavailability of supplemental registrations and dividing applications, among other disadvantages of Madrid filings in the U.S.
