Top Twelve Tips for Avoiding the Foreign Filing Deadline Crunch


Our corner of the IP world is chock-full of minutiae – powers of attorney, legalized declarations of intent to use, merger certificates, you name it.  So how do we manage all those details and still meet dozens of filing deadlines every week?

Very carefully.

Seriously, here are a few tricks we use to tackle foreign trademark filing and renewal requirements. These tactics help us meet deadlines with time to spare, and without having to go back to our clients multiple times to request additional documents. We’re all about efficiency!

When we’re working with local counsel, some of the first questions we ask are:

  1. Can you use the signed power of attorney you already have on file [option: even if the client’s address has changed]?
  2. How much time will likely pass before [the application matures to registration/the renewal application is accepted/we receive confirmation of the recordation of the assignment]?
  3. What fees and expenses will be incurred from start to finish?
  4. What documents and information will you need to support the application/renewal/recordation of assignment? By when will you need them?
  5. Before our client signs, will you please review our template assignment document to confirm that it is acceptable – or do you have a form we should use?
  6. Are any extensions of the filing deadline available, and at what cost?
  7. Is notarization or legalization truly necessary? (Surprise! Sometimes, the answer is “No”!)
  8. Can plain PDF copies of the document be used to meet the deadline, with the original notarized/legalized documents to be filed later? Is it strictly necessary to supply original documents?
  9. Can you renew the registration in the name of the current owner now, and update the ownership later? (Don’t try this at home, folks –  it won’t fly in the USA.)
  10. Can local counsel or US counsel sign the document on the client’s behalf?
  11. Can I attach a US notarial certificate to a photocopy of a document, to establish that the photocopy is a true copy, and then legalize that combined document? (This is a personal favorite. It’s like a magic wand for making lost original documents reappear!)
  12. What other work-arounds can you suggest to help meet the deadline at minimal expense to our client?

Using these questions early on in the process has proven to be a real time-saver.  Saved time = saved money = happy trademark owner.  What’s not to like?

This entry was posted in Prosecution Outside USA, Trademark Portfolio Management and tagged , , , by .
Date Published: August 31, 2016
Jennifer L. Dean is a partner and vice-chair of the firm's Intellectual Property Practice Group, and the chair of Drinker Biddle's Trademarks practice team. The World Trademark Review 1000 survey has described Jennifer as the “smart, fast and practical” chair of a “proactive, extremely knowledgeable and timing-sensitive” group that provides “incomparably good” service. In addition, Managing Intellectual Property has repeatedly named Jennifer among the “Top 250 Women in IP,” and identified her as an “IP Star” on numerous occasions. Jennifer's practice encompasses trademark clearance, registration and enforcement, focusing in particular on brand selection and management, and on litigation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. She manages global trademark portfolios in fields ranging from soft drinks to reinsurance, and also advises clients on copyright and licensing issues.