We are Canadian, But Want to Register our Trademark in the United States - Can We File for Federal Registration?
Canada is the closest neighboring country to the United States, and many businesses operate on both sides of the border. Very often, the US marketplace is a very attractive area of expansion for a Canadian sole proprietor or business entity. If you're a Canadian citizen or business owner looking to expand into the U.S. market, protecting your brand is critical. One of the key steps is registering your trademark with the United States Patent and Trademark Office (USPTO). A federal trademark not only solidifies your brand's identity in the U.S. but also provides legal backing to prevent infringement. But, is it even possible as a non-US citizen and/or resident to file for a federal US trademark registration? This guide will walk you through how Canadian citizens and companies can register a U.S. federal trademark.
Why Register a Trademark in the U.S.?
The U.S. represents one of the largest markets in the world, making it a prime growth opportunity for Canadian businesses. A registered trademark offers several advantages, such as:
- Exclusive Rights: Federal registration grants exclusive rights to use your trademark across the U.S. for the goods or services specified.
- Legal Protection: You gain the ability to take legal action against anyone who infringes on your mark.
- Customs Protection: You can work with U.S. Customs to block the import of counterfeit goods bearing your trademark.
- Enhanced Brand Value: A registered trademark increases brand credibility and is considered an asset that adds intrinsic value to your business.
Can Canadians Register a Trademark in the U.S.?
The short answer is yes, but the devil is in the details, as there are critical rrules for no-US domiciled applicants that must be adhered to. If you are Canadian, you cannot simply file an application on your own or through a "do it yourself" discount website. Rather, the prevailing US law requires that you are represented by and file through a licensed US lawyer. This rule change has come about in the last several years, due to the high volume of US trademark applications being filed by non-US domiciled applicants. (including from Canada) This requirement applies to all aspects and phases of the USPTO trademark process (ie. new applications, renewals, assignments, maintenance, etc.)
The rule actually works in your favor - as an experienced US trademark attorney helps you navigate through the trademark application process, which can be confusing and frustrating. Typically an experienced US trademark attorney will also handle all the back-and-forth correspondence with the USPTO and take care of issues that may arise during the registration process (such as office action refusals). Our office has assisted numerous Canadian clients with the US trademark process, and is versed in assisting non-US domiciled applicants.
Steps to Apply for a U.S. Federal Trademark
The procedure for filing as a Canadian is very similar (beyond the requirement of an attorney) to the process faced by a US applicant. Obviously, the US-licensed attorney will handle much of this process, with input from you, the client. An experienced US trademark attorney will always recommend that you first conduct a comprehensive search and have them do a Clearance Opinon to make sure that there are not any pre-existing trademarks (US, State or unregistered common law) which could cause problems in your quest to register a trademark. Though such a search and Clearance Opinon is not required by the USPTO, they are generally a wise strategy to avoid having to potentially re-brand later.
Determine the Basis of your Trademark Filing
One of the most improtant preliminary steps is to determine what basis to file under. Just like an American applicant, you can utilize the 2 main options available as a basis for a trademark application:
- Use in Commerce (Section 1(a)): If your trademark is already being used in the U.S. market, you'll need to provide proof (evidence such as product labels, packaging, or marketing material showing the trademark in use).
- Intent to Use (Section 1(b)): If you haven't yet used your trademark in the U.S. but plan to do so in the near future, you can file based on an intent to use. Once approved, you'll need to submit proof of use before your registration is finalized.
However, you also have other options, as a non-US domiciled applicant, that you may not be aware of, and which may be better suited for your circumstances (especially if you do not want to prove use in the United States, and have a pre-exisiting Canadian Trademark Registration).
Section 44(d) and Section 44(e) of the Lanham Act provide additional options for foreign applicants seeking trademark protection in the U.S. under international treaties. Section 44(e) allows an applicant to base their U.S. trademark application on a registered trademark in their home country. To qualify, the foreign registration must be issued by the applicant's country of origin, and the mark must be identical to the one registered in that country. Meanwhile, Section 44(e) permits applicants to rely on an application they've filed in their home country instead of a registration. However, the U.S. filing must occur within six months of the original foreign application to claim priority. You will still need to establish a registration basis such as a use in commerce and/or a foreign registration basis if you begin based on a pending foreign application under Section 44(e).
Similarly, as of a few years ago, Canada joined the Madrid Treaty and Protocols. Thus, if you have a Canadian trademark registration, you can seek to extend the protection of that Canadian registration through the Madrid Protocol to the United States. This process is undertaken through the World Intellectual Property Organization (WIPO), designating the U.S. as one of the countries where you seek protection. This process streamlines cross-border trademark filings, saving time and resources. However, keep in mind that the U.S. will independently examine and approve your trademark application based on its own legal standards.
How Long Does the Process Take?
The application and registration process is a long one. The USPTO is currrently taking over 12 months to process an application (between the time of filing of the application to a final decision). However, the good news is that this process is still much faster than the Canadian trademark office! That sometimes may cause a problem, if you base your US application on a pre-existing Canadian application, which is still pending by the time your US application is examined. You may need to suspend your US application to allow for the Canadian application to catch up (if filing under Sectio n44(3)).
Maintaining Your U.S. Trademark
Once your trademark application is approved and your trademark is registered at the USPTO, unlike Canadian trademarks, U.S. registrations require ongoing maintenance after approval:
- File your first Declaration of Use (Section 8) between the 5th and 6th anniversary of registration.
- Submit a Renewal Application (Section 9) every 10 years.
Failure to meet these deadlines can result in the cancellation of your trademark. Again, just like the application process, this phase requires that you file through a US-licensed trademark attorney.
Final Thoughts
Expanding your brand into the U.S. is an exciting venture, but safeguarding your intellectual property is essential. Registering a federal trademark through the USPTO can grant you the exclusive rights and legal protections needed to operate confidently in the competitive U.S. market.
If you're ready to file or need legal advice tailored to your situation, consult with a trademark attorney to guide you through the process with ease. A reputable attorney can help make sure your application is successful and your brand stays protected for years to come. Our law firm is versed and experienced in assisting non-US domiciled clients with the USPTO trademark process.
Protect your business. Protect your brand. Take the first step toward registering your U.S. trademark today. Contact us for a free initial consultation!
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