Is US Trademark Registration Important for Canadians

Dave MacDonell

Dave MacDonell

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Is US Trademark Registration Important for Canadian Businesses?

This blog series is intended to answer frequently asked questions about trademarks and trademark registration in Canada.  One of the questions we get asked most often by clients is whether they need to register their Canadian trademark in the United States. The answer is maybe. Here’s what you should consider before registering your trademark in the US.

First and foremost, you should ask yourself whether you currently operate in the United States or have any future plans to bring your business to the US market. If so, then registering your trademark in the US might be a good idea. Clients often mistakenly believe that by registering their trademark Canada they have achieved protection throughout North America. This is simply not true. Trademarks are national in scope, so when you register a trademark in Canada you only receive protection for Canada. Similarly when you register a trademark in the US, you only receive protection for the US.

Because the US, like Canada, is a signatory to the Paris Convention for the Protection of Industrial Property, a trademark application can be filed in the US within six months of filing the application in Canada, and the US application will be back-dated to the filing date of the original Canadian application. This is called ‘priority filing’ and the applicant will make a priority claim as part of their application. Priority filing is an important advantage to a business that plans to expand into the US, but needs to defer the cost to a later date, or has not yet been able to establish use in the US. Essentially, this will buy the applicant six months of additional time. However, remember to count the days!  If the application is not filed in US within exactly 6 months from the date of the trademark application being filed in Canada, the ability to claim the earlier filing date will be lost.

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