5 Steps for Canadian Businesses Registering a U.S. Trademark

By Josh Gerben, Esq.

The 5 steps needed to register a United States trademark as a Canadian based business:

1. File your trademark in Canada
2. Engage an experienced trademark attorney based in the U.S.
3. Conduct a comprehensive trademark search
4. File your trademark application with the USPTO
5. Properly maintain your U.S. trademark registration

1. Register First in Canada

Before you start the process to register your trademark in the U.S., you should first file the mark in Canada, where your business is based.  Once your Canadian application is filed, submit your U.S. trademark application to the United States Patent and Trademark Office, known as the USPTO, within six months.  This will allow you to use the priority date of your Canadian application in the United States as well, so anyone looking to file a similar mark after that date will not be approved.

Another important reason to register first in Canada is the matter of “use in commerce.”  U.S. trademark law requires that a trademark be “in use in commerce” to be registered unless the same trademark is registered in another country.  This means that if you own a Canadian trademark, your U.S. trademark can be registered up to five years before you must show “use in commerce” in the United States.

Looking to register your trademark in Canada? If so, we’ve written a step by step guide here

2. Engage a U.S. Based Attorney

Significant changes have recently been made to U.S. trademark law.  As of August 2019, the USPTO now requires all foreign applicants to hire a U.S. based trademark attorney.  A business or individual is considered ‘foreign’ by the USPTO if their principal place of business or permanent legal residence is outside the United States.  You can still submit a basic application without representation, but you will not be able to respond to any Office Actions without a U.S. based attorney.

Not only is it required by law, but working with a U.S. trademark attorney is also extremely beneficial.  If you’ve recently registered your trademark in Canada, or plan to do so soon, you understand that this legal process can be very detailed and time-consuming.  Moreover, the technical requirements of a United States trademark application are different than the technical requirements of a Canadian application.   If you file the same application in the United States as you file in Canada, you are likely to receive an Office Action requiring revisions and delay your US registration. Working with a U.S. based attorney before, during, and after registration ensures that the process runs smoothly, and you can remain focused on growing your business in the United States with confidence that your trademark is in the hands of an experienced professional.

3. Conduct a Comprehensive Trademark Search

The USPTO won’t approve a trademark if a confusingly similar mark is already in use.  Before you submit your U.S. application, conduct a comprehensive trademark search to be sure that no one else is using a similar mark.  It can be upsetting to learn that your mark exists, but it’s best to find this out before you submit your application and pay your fees to the USPTO.  If you do find a similar mark in use, you can work with your attorney to make the necessary changes to your own mark before filing.  Remember, just because a trademark is clear to register in Canada, does not mean it will be clear to register in the United States.

It’s not hard to find free or inexpensive trademark searches online and through legal sites, but it’s best to conduct a comprehensive search with an experienced trademark attorney.  DIY searches usually only return exact matches to your trademark, but most trademark disputes arise, not from exact matches, but from any marks that could cause a likelihood of confusion in the marketplace.  The software used by most trademark attorneys, on the other hand, is much more comprehensive, revealing not only exact matches but similar matches to your mark as well.

Read our blog for more tips on how to conduct a trademark search.

4. File Your Trademark Application

Once you’ve hired a U.S. based attorney and conducted a comprehensive trademark search, you can move forward with submitting your trademark application.  By filing the application directly in the United States (and not through the Madrid Protocol) your application will move through the registration process much quicker— as much as an entire year.  Moreover, your US-based attorney will be able to draft your application to meet the technical requirements of the USPTO, avoiding delays in the application process.

5. Maintain Your U.S. Trademark Registration

Your trademark protections are valuable, but only if you enforce them.  If you allow others to use your mark without permission or consequence, your brand’s reputation could be greatly impacted, and confusion could cause loyal customers to sway from your product or service.  Making sure your trademark is not being infringed upon takes time and attention, but fortunately, many trademark attorneys offer monitoring services to assist you in this effort.  If potential infringement is found, work with your attorney to take immediate legal action.  A cease-and-desist letter drafted by your attorney is often all it takes to put the infringer on notice, but occasionally, more formal legal action is required.

As long as you continue to use your mark consistently and meet renewal deadlines, your trademark protections won’t expire!  Be sure to use your trademark only as it appears in your trademark application.  You will also want to make note of renewal deadlines and begin the process to renew your mark well before the deadlines approach.

Registering a U.S. Trademark as a Canadian Based Business

As the owner of a business based in Canada, it’s likely that you will one day reach customers in the U.S. if you aren’t already.  In order to protect your brand within the United States, you should strongly consider a United States trademark registration.  Once you’ve registered your mark in Canada, hire a trademark attorney based in the U.S.  Your attorney will conduct a comprehensive trademark search to ensure your mark isn’t already in use, then draft your application, either through the Madrid Protocol or directly to the USPTO.  After you’ve received approval of your U.S. trademark registration, be sure to maintain your mark.  Do this by monitoring your trademark’s use and enforcing your rights.  It’s also important to meet renewal deadlines issued by the USPTO.  A trademark registered in the United States provides valuable protections for your business, so contact a trademark attorney today to begin the process.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.