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Protecting Your Trademark in the United States

By: Christopher Heer, Annette Latoszewska | Last updated: May 28, 2021

Why Apply for a U.S. Trademark?

Canada and the U.S. are among the world’s largest trading partners. The two countries exchange more than $1.5 billion in goods and services every day, according to the Canadian Intellectual Property Office.

For most businesses, entering the U.S. market represents a natural and relatively straightforward expansion of their thriving business. Note, however, that, just like in Canada, making the most out of the success of a business, success which is embodied in its reputation, requires comprehensive trademark protection. While many prudent Canadian businesses will already own a trademark registration, trademark protection is territorial. A Canadian trademark registration does not protect that trademark in the U.S. – for that, a U.S. trademark registration is critical. Although unregistered marks are afforded some degree of protection in the U.S., as in Canada, this protection pales in comparison to that which is granted by a U.S. trademark registration.

The Process of Registering a U.S. Trademark

How is it different?

Although the process of registering a U.S. trademark generally resembles that of registering a trademark in Canada, in that it consists of the steps of filing, approval, advertisement, allowance and registration, there are noteworthy differences.

These differences include:

  • As of 2019, a Canadian applicant for a U.S. trademark requires a U.S.-licensed attorney to file the application. Note, however, that applicants can and many applicants do continue to work with their representatives in Canada to file the application with the help of a U.S. attorney.

  • The U.S. has two federal trademark registers: 1) the Principal Register and 2) the Supplemental Register. While the Principal Register is, per se, the place to be, the Supplement Register provides a more limited scope of protection to marks which are ineligible for registration on the Principal Register due, for example, to their descriptiveness. Like marks on the Principal Register, marks registered on the Supplemental Register are cited against subsequent applications for trademarks if confusingly similar or identical.

  • The individual U.S. states also have their own state trademark registers, however, a federal trademark is generally preferable. In the event of a conflict, a federal trademark trumps a state trademark, and only a federal trademark grants exclusive rights to the use of the mark nationwide. The protection offered by state marks is limited to a particular geographic area (and not the entire state).

  • The U.S. application fee for a trademark, like Canada’s, depends on the number of classes of goods and services contained in the application. Unlike Canada’s discounted fee for additional classes beyond the first class, the U.S. fee is, as of today, $250 or $350 USD per class, depending on the method of filing, whether it be the first class or the fourth.

  • A trademark may take 12-18 months to register, which includes 4-6 months wait time from the date of filing to the date the United States Patent and Trademarks Office (USPTO) completes its review of your application. These are substantially faster processing times than are currently available in Canada.

  • The opposition period in the U.S. is only 30 days from the date the trademark is advertised, whereas in Canada this period is 2 months.

  • Trademarks are filed on a “use” or an “intent to use” basis. Applicants filing on the latter basis will be required to submit a Statement of Use before the trademark is registered. A Statement of Use is a form which serves to prove that you are now using your mark commercially. A correctly filed Statement of Use will include “specimens” which are photos, screen captures, etc. which show the mark’s commercial use in the U.S. Generally, applicants have 6 months from the date their trademark was allowed to submit the Statement.

  • To maintain a registration, the owner of a trademark must file a Declaration of Use between the 5th and 6th anniversary of registration proving use of the mark. This exercise is repeated between the 9th and 10th anniversary of registration (concurrent with making a renewal request), and again every 10 years after that.

How to Apply

Applicants for U.S. federal trademarks may pursue trademark protection in one of two ways: either by filing an application directly with the USPTO, or by designating the U.S. in a Madrid application.

In brief, a Madrid application is an international application for a trademark administered by the World Intellectual Property Office within which multiple territories may be designated as territories in which protection for that trademark is being sought. When trademark protection is desired in multiple jurisdictions, a Madrid application can offer cost savings and simplify the process.

As mentioned above, a Canadian applicant for a trademark must be represented by a U.S.-licensed attorney. You may choose to retain that attorney directly, or, if you’re already represented by a Canadian law firm, your firm may be able to arrange for the filing of your U.S. trademark application by working with one of its foreign associates in the U.S. This is advantageous because it consolidates your trademark protection, reducing the work involved with and simplifying the maintenance of your global IP. Further, the firm’s foreign associates are usually practitioners with which they work regularly and for good reason. Thus, working with a Canadian firm may also save you the trouble of vetting a U.S. representative.

While your attorney will guide you through the application process, you may want to get a head start on your application by considering the following:

  • What trademark do you want to register? Is there more than one? Which one is most commonly used and/or would be most commonly used in the U.S.? Which one has a reputation in Canada?

  • What are the goods and services in association with which the trademark will be used? Are they the same as those in association with which the trademark is registered in Canada? In other countries? When answering these questions, be sure to note the discussion above regarding the requirement to prove use of an applied-for or registered mark at regular intervals. Not only does a broad registration cost more, it may present a challenge when it comes time to demonstrate use.

After Filing

Once your trademark application is filed, you can expect a similar process to that of Canada to unfold.

Your application will be examined by the trademarks office for compliance with various formal and substantive requirements. The trademarks office will assess whether your trademark is eligible for registration as is and advise you (rather, your representative) either way. If your trademark is deemed ineligible for registration, your representative may respond to the office with argument that the trademark should be eligible and/or by amending your application. Multiple rounds of back and forth may be involved before a final decision is rendered.

If and when your trademark is allowed to register, it is then advertised in the Official Gazette and third parties are given 30 days to oppose the application if desired. If no opposition is received, or any opposition received is resolved, your trademark will subsequently either register or you’ll be issued a Notice of Allowance, depending on whether, at the time of filing, you indicated that your mark was already in commercial use in the U.S. A Notice of Allowance is issued for marks which were filed on the basis of intent to use the marks in the future. Before these marks are registered, the applicants must show they’ve put them to use.

Once registered, you’ll need to maintain your trademark registration by regularly demonstrating its ongoing commercial use, requesting renewal, and paying the associated fees.

Although the process may seem daunting, a U.S. federal trademark registration is critical to a successful expansion into the U.S. market. By protecting your trademark across the country, a trademark registration allows you to grow your business and reputation without fear of it being exploited by third parties using your mark without permission. A trademark registration sets your business up for lasting, undisturbed success.

If you’re considering expanding your business into the United States and have questions about protecting your trademarks on the other side of the border, call us today for a complimentary and confidential initial telephone appointment.