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Protecting your trademarks south of the border: Differences between Canadian and American trademark law

Canadian businesses looking to expand (or which have already expanded) south of the border are well advised to consider registering their trademarks in the US.

Overall, Canada and the US have similar substantive and procedural requirements for trademark applications, however, there are some important differences of which Canadians should be aware when applying to register their mark in the US, including the following:

1. Availability of trademarks. Since Canada and the US operate separate trademark registration systems, a mark which is registrable in Canada may not be registrable in the US, and vice versa.

2. Additional filing fees for goods/services in more than one class. Whereas a Canadian application can cover any number of goods or services for the same filing fee, the US classifies goods and services into 45 separate classes. US filing fees are based on the number of “classes” of goods or services listed in the application.

3. Actual use and intention to use. Similarly to a Canadian application, a US application can be based on actual use or intention to use the mark. Where a US application is based on actual use, the application must specify both the earliest use date in the US and the earliest use date anywhere. If an applicant needs time to determine the earliest use dates, it can file an application based on intention to use and later convert the application to an actual use basis. This type of conversion is not permitted in Canada. If a US application is based on intention to use, the applicant must submit a “Statement of Use” in order to obtain a registration. The “Statement of Use” must be filed within six months of the application receiving a “Notice of Allowance”, however the applicant may request and obtain up to five, six-month extensions of this deadline. Note that if an applicant claims an intention to use without actually having a good faith intention to use the mark in the US, the application or resulting registration may be vulnerable to invalidation. Also note that for a federal registration, “use” of a trademark in the US requires use in federally-regulated commerce (e.g. interstate commerce or commerce between the US and another country, such as Canada).

4. Specimens of use. Whereas Canada does not require specimens of use for registration or renewal purposes, the US requires a specimen showing an actual example of how the trademark is being used. One specimen for each class of goods or services must be submitted prior to registration (if the application is based on actual use or intention to use) and again upon renewing the registration. A specimen can show the trademark being used on the goods, or on their packaging or labelling, or in the sale or advertising of services (e.g. signage, brochures, advertisements).

5. Non-traditional marks. While Canada is only now becoming more accepting of applications for non-traditional types of trademarks (see the article Take Advantage of Proposed Changes to Canadian Trade-marks Regulations – Non-Traditional Trade-marks also in this newsletter), the US has generally been more open to registering such trademarks. Sound marks have been registered in the US for more than 60 years. Other types of non-traditional trademarks, such as scents, holograms, motions, and textures have also been registered in the US.

6. Principal and supplemental registers. In Canada, there is a single trademark register. Federally in the US, there is both a “principal register” and a “supplemental register”. The supplemental register can provide limited trademark protection for marks which are ineligible for registration on the principal register. Marks which are “merely descriptive” of the applicant’s goods or services are generally not eligible for the principal register, but they may be eligible for the supplemental register. A registration on the supplemental register entitles the owner to use the ® symbol next to the mark, and can be cited by the USPTO against a pending application. Registration on the supplemental register is also a means of providing notice to the general public that a trademark is already “taken”.

By Amy M. Fong and Cameron G. Funnell

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