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How Canadian Businesses can Register Trademarks in the United States

If you have a Canadian business or own a Canadian trademark, can you obtain a U.S. Trademark registration? If you plan on using the mark on goods or services in the U.S., the simple answer is absolutely yes! Being a Michigan-based intellectual property law firm, we frequently counsel our Canadian friends in trademark matters. There are really only a few basic steps that should be followed.

Retain a U.S. Trademark Attorney

Due to recent changes in U.S. law, all foreign trademark applicants are required to hire an U.S. based trademark attorney for certain filings. This change took place in August of 2019- so, if you went through this process before that date, it may have looked a little bit different than what you’re reading in this article. A U.S based attorney is required to respond to any office action issued by the United States Patent & Trademark Office (USPTO). So, while anyone with permanent legal residence or any company with its principal place of business outside of the United States can file their own trademark application, they can NOT respond to any revisions or amendments required by the USPTO. Only U.S. based attorneys can do that for foreign applicants.

Outside of the legal necessity of retaining a U.S. based trademark attorney, foreign applicants will receive a beneficial understanding of the U.S. trademark registration process and underlying law. Intellectual property law can be complicated, especially if it differs from the laws of an applicant’s home country. A U.S. trademark application has several requirements that differ from a Canadian trademark application, which increases the likelihood of the USPTO issuing office actions for applications drafted by those not familiar with the U.S. requirements.

And, because a U.S. based attorney is required to submit responses to office actions on behalf of foreign applicants, it typically makes sense to retain a U.S. based intellectual property attorney from the start. The whole application process will run more smoothly, and foreign applicants don’t have to worry about missing or misunderstanding any of the requirements of the U.S. process.

Have your Attorney Conduct a Trademark Search

After you’ve retained a U.S. trademark attorney, the attorney’s first recommendation should be to conduct a thorough trademark search on your proposed trademark. This is an important step we recommend for all of our trademark clients to take before we prepare and file a trademark application. While a mark may not have any infringement issues in Canada, it may have infringement issues in the U.S.

If your attorney finds other U.S. trademarks that might be confusingly similar with your mark which could block the U.S. trademark application, then it may not be worth your time or energy to move forward with a U.S. application. It’s much better to find this out through a search than through a failed trademark application- applications can take months to process through the USPTO. If you’re unable to use your proposed mark in the States, that time and money could be better used on choosing and protecting another mark that would be registerable in the U.S.

Have your Attorney File your Trademark Application

If your trademark search doesn’t yield any potential registrability issues or infringement issues, then the next step is to have your trademark attorney file your U.S. trademark application. This part of the process is fairly straightforward- your attorney will know what to do to properly prepare and file the application based on your information and your trademark. During this process, the USPTO may issue office actions asking for changes to be made to your application. Office actions can either be non-substantive or substantive. Non-substantive office actions are fairly common and frequently just require a change in language, phrasing, or similar small details on the application. Substantive office actions typically deal with other registered marks that are confusingly similar to your mark. Your U.S. based trademark attorney can help you navigate through what these office actions mean and file responses on your behalf. At the end of the day, the goal is for your trademark application to end in a trademark registration.

Have your Attorney Maintain your Trademark Registration

Once you’ve received your trademark registration- congratulations! You now have enforceable trademark rights and protection in the U.S.. The U.S. does have maintenance requirements over the years for trademark owners to keep their registrations alive.

As you may have guessed at this point, the U.S. trademark maintenance requirements are different from the Canadian trademark maintenance requirements. Your U.S. based trademark attorney should docket the maintenance deadlines and notify you well in advance of the deadlines. Further, with your authorization, your attorney can file the appropriate documents to maintain your U.S. trademark registration.

If you are a Canadian yourself or are part of a Canadian business, we would be happy to work with you and to assist in all of your U.S. trademark needs. Please reach out to us with your inquiries!

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