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Considerations with United States trademark registrations

Disclaimer: The information provided in this factsheet is meant as an educational resource only and should not be construed as legal advice.

  1. A trademark is a sign or combination of signs used or proposed to be used by a person to distinguish their goods or services from those of others. Typical trademarks include brand names and logos. By securing a domain name or incorporating a company only, you are not securing a trademark. You are using a name as a trademark if you are selling goods and services under that name. If you are using a name ONLY as a company name or a domain name (while you are operating or selling your goods and services under different names), you are not using this name as a trademark.
  2. Registering your trademarks in the United States (US) comes with the following benefits:
    • Provides you with exclusive right to use in US jurisdiction for the goods and services in the registration.
    • Allows you to stop others from using a confusingly similar trademark more efficiently.
    • Can be licensed and used to generate revenue and increase your brand's popularity.
    • After 5 years of registration your registration may become incontestable. This limits the kind of defenses an alleged infringer can raise.
  3. You can register your trademark at the US Federal level (US Patent and Trademark Office) or at the level of the individual states. If you are using your trademark in interstate commerce and/or between the US and a foreign country (e.g. Canada) you may wish to consider registering your trademark with the US Patent and Trademark Office ("USPTO").
  4. It is generally recommended to file a trademark application and begin using your trademark after performing trademark availability searching online and in trademark databases. If/when your trademark appears to be available, it is a good practice to secure the relevant domain names as soon as possible, so that your customers can find you on the internet. Companies may wish to consider securing relevant top level domain names (such as .COM, .ORG, .AI in addition to .CA).
  5. There are several treaties in place that allow you to register your trademarks efficiently in multiple countries:
    • The Paris Convention allows you to keep the priority filing date of the country where you first filed your trademark application (e.g. Canada) when you file the same trademark application in other participating countries (e.g. US) as long as your subsequent filings take place within 6 months of filing your first application.
    • If you wish to file trademark applications in multiple countries, the Madrid Protocol allows you to file a single trademark application with the World Intellectual Property Office (WIPO) to register your trademark in your designated countries (e.g. US, EU, China). By going this route, you can obtain significant cost savings when you file a trademark application in more than 3 countries. It is important to note that a country must be a member of the Madrid Union in order to take advantage of this treaty.
  6. In the US, first use of a trademark typically designates ownership and provides you with a priority claim to the trademark over identical or similar trademarks and registrations that were filed later by competitors.

    Example: In 2018 you filed a trademark application for "Kambucho" with the USPTO to protect the product name of a line of beverages you began selling that same year. A few months later, you notice that a competitor already filed/registered their trademark application for "Kambucho" beverages in 2017 (before you did) however, they have not yet begun selling their beverages in the US.

    Since you can prove first use in the US, you can stop or cancel your competitor's registration and their future use of the trademark by opposing their application before the Trademark Trial and Appeal Board or by starting litigation before the Federal Court.

    Solutions can be obtained through settlement negotiations, but, keep in mind that this can be a costly and long endeavour. Therefore, it is best to file your trademark application as soon as you establish your brand after trademark availability searching.

  7. If you use your trademark in the US but have not registered it in the US, you may have what is considered a common law trademark. Common law trademarks come with limitations:
    • They only protect you in and around the areas where you already do business in the US.
    • If/when your competitors apply for an identical or similar trademark registration with the USPTO, the USPTO will not refuse the registration based on the fact that you used the trademark first. You may have to go through opposition or litigation procedures to stop your competitor. However, if you filed or registered a trademark application with the USPTO first, the USPTO will refuse your competitor's trademark registration.
    • Enforcing your common law trademark will be more cumbersome (in part because you will have the added burden of proving use). Federal registration allows you to go after the defendant's profits, seek statutory damages, and ask for punitive damages, among other things.

    Example: You are a Canadian company and you also incorporated in Florida. Because you did not obtain a trademark registration for your brand name, this limits your ability to enforce your trademark when a competitor who is using an extremely similar brand name in New York. This could affect your business as potential customers may be confused, believing that the New York and Florida business have the same owner. A common law trademark does not give you the right to prevent or act against any new businesses in other states from operating under the same name as yours.

    A federal registration provides you with national protection and extra security for your company. You can enforce your federal registration against a competitor in any state who is operating under a similar name at a later time and you'd only have to prove that you have obtained a US trademark registration.

Key considerations for Canadian companies:

Additional information:

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