Case Study

Practice Areas

Protecting Trademarks in a Global Marketplace

The global marketplace offers tremendous growth opportunities. It also presents new challenges for protecting intellectual property across international borders. To help clients protect the integrity and value of their brand, Tonkon Torp intellectual property attorney Chris Erickson has adopted a global perspective on his trademark practice to help companies register and protect their trademarks and service marks in the U.S. and throughout the world. Tonkon Torp is a full service trademark firm – taking companies through risk assessment to filing and registration, and litigation if necessary.

Chris has been involved in the International Trademark Association (INTA) for eight years. By attending annual meetings and participating in committee work, he has built and utilized a valuable network of global trademark attorneys. When a client hires Tonkon Torp to obtain international trademark protection, Chris taps into this global network to engage qualified, experienced attorneys in other countries to help with the trademark filing, and to represent the client's interest in that country. Chris also considers and interprets the advice from those lawyers to help clients make the best decisions for their trademarks.

Working with Chris in the global trademark sphere is attorney Eric Beach and paralegal Lisa Gabel. Eric has broad experience in trademark prosecution, enforcement, and especially litigation. Lisa has worked in intellectual property and trademarks since 2000, and in addition to attending international trademark conferences, she serves on INTA committees.

Currently, Tonkon Torp maintains a client portfolio that contains over 2,000 active trademark records in over 100 countries, touching nearly every country on the globe.

In addition to facilitating outbound relationships with foreign attorneys, Chris serves as a domestic trademark law expert for global companies seeking trademark protection in the U.S. He has also hosted seminars and roundtables at Tonkon Torp's headquarters in Portland for local companies and practitioners to talk about trademark issues.

The diversity in Chris' practice goes beyond geography. Chris is a self-professed "industry agnostic" who counts a broad range of industries among his clients including mining, food and beverage, veterinary, health care, and consumers products, among many others.

He also works with companies of all sizes and maturity. For established companies with an existing international trademark portfolio, Chris works to expand trademark protection into additional markets. For younger companies, once a geographic market extends outside of the home state, Chris can begin to work on seeking federal trademark protection.

For any organization, Chris feels it's never too early to think about trademarks. He encourages all his clients to engage in some level of clearance or risk assessment on the desired trademark to determine the likelihood of getting sued, or that the application will get refused. Launching a brand without research and risk assessment can cost a great deal of money and invite a cease and desist action. Companies can also file an "intent to use" trademark application to get in line for a promising trademark before another company grabs it.

Trademark protection is just one category of work Chris undertakes in the Intellectual Property practice group. The attorneys in this group offer a full service spectrum of services to help clients protect and preserve intellectual property, and negotiate and structure transactions to generate revenue from intellectual property assets.

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