The 5 steps needed to register a United States trademark as a Canadian based business:
- File your trademark in Canada
- Engage an experienced trademark attorney based in the U.S.
- Conduct a comprehensive trademark search
- File your trademark application with the USPTO
- 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.
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.