If you’re a US business that sells or plans to sell your goods or services in Canada, you might want to consider filing a trademark in Canada. A trademark is a word, phrase, symbol, design, or a combination of these things that identifies your goods or services and distinguishes them from others in the market. A trademark can help you protect your brand, prevent confusion, and build goodwill with your customers in Canada.
But how do you file a trademark in Canada as a US business? What are the steps and requirements? And what are the benefits and challenges of doing so? In this blog post, we’ll answer these questions and more. We’ll also explore an alternative process that might be easier and cheaper for some US businesses: the Madrid Protocol.
Why file a trademark in Canada as a US business?
Canada is one of the largest trading partners of the US, with over $600 billion worth of goods and services exchanged between the two countries in 2020. Many US businesses see Canada as a natural and lucrative market for expanding their operations and reaching new customers.
However, having a trademark in the US does not automatically give you any rights or protection in Canada. Trademark rights are territorial, meaning that they only apply in the country or region where they are registered. If you want to enjoy the benefits of having a trademark in Canada, such as:
The exclusive right to use your mark in Canada for your goods or services
The ability to sue anyone who infringes your mark or tries to confuse customers by using a similar mark
The option to license or sell your mark to others
The right to use the ® symbol next to your mark
You need to file a trademark application with the Canadian Intellectual Property Office (CIPO) and register your mark in Canada.
How to choose a strong mark for Canada?
Before you file a trademark application in Canada, you need to make sure that you choose a strong mark that can function as a trademark and is not already taken by someone else.
A strong mark is one that is distinctive and not descriptive of your goods or services. For example, you can’t trademark the word “book” for selling books, because that’s too generic and descriptive. But you can trademark “Amazon” for selling books online, because that’s distinctive and arbitrary.
There are different levels of distinctiveness for trademarks, ranging from fanciful to generic. Here’s a brief overview:
Fanciful: These are made-up words that have no meaning other than as trademarks. Examples are Kodak, Xerox, and Google.
Arbitrary: These are existing words that have no relation to the goods or services they identify. Examples are Apple, Camel, and Shell.
Suggestive: These are words that hint at the nature or quality of the goods or services without directly describing them. Examples are Netflix, Jaguar, and Coppertone.
Descriptive: These are words that describe the goods or services or their characteristics. Examples are Best Buy, American Airlines, and Pizza Hut. Descriptive marks are not distinctive enough to be registered as trademarks unless they acquire secondary meaning, which means that consumers associate them with a specific source over time.
Generic: These are words that are the common name for the goods or services. Examples are aspirin, bicycle, and cheese. Generic words can never function as trademarks because they don’t distinguish one source from another.
You should aim to choose a mark that is fanciful, arbitrary, or suggestive, as these are considered strong marks that can be easily registered and protected.
Hire a Canadian Attorney
If you’re a US business that does not have an address in Canada, you need to hire a Canadian attorney or agent to file your trademark application with CIPO. This is because CIPO requires all foreign applicants to have a Canadian representative who can receive correspondence and notices on their behalf.
A Canadian attorney or agent can also help you with other aspects of filing a trademark in Canada, such as:
Conducting a comprehensive trademark search to make sure your mark is available and not conflicting with any existing marks
Preparing and filing the trademark application according to CIPO’s requirements and fees
Responding to any objections or requests from CIPO during the examination process
Renewing your trademark registration every 10 years
How to conduct a trademark search for Canada?
Just like with a US trademark application, before you file your Canadian trademark application with CIPO, you need to conduct a trademark search to make sure your mark is available and not conflicting with any existing marks. A trademark search can help you avoid wasting time and money on a mark that might be refused or opposed by CIPO or other parties.
You can start by searching the Canadian Trademarks Database, which contains information about all registered and pending trademarks in Canada. You can search by keyword, category, owner name, registration number, and other criteria. You can also view the images and details of each mark.
However, searching the Canadian Trademarks Database is not enough to ensure that your mark is clear to use in Canada. You also need to search other sources of potential conflicts, such as:
Business names and corporate names registered in each province or territory
Domain names and social media handles
Trade names and unregistered marks used in the market
Common law rights and prior use of similar marks
Conducting a comprehensive trademark search can be complex and time-consuming, especially if you’re not familiar with the Canadian market and legal system. That’s why it’s advisable to hire an attorney who can perform a professional trademark search and provide you with a detailed report and opinion on the availability and registrability of your mark.
How to file a trademark application with CIPO?
Once you have chosen a strong mark and conducted a trademark search, you’re ready to file your trademark application with CIPO. You can file your application online through CIPO’s website.
After you file your application, you will receive an acknowledgment and a filing date from CIPO. Your application will then be assigned to an examiner who will review it for compliance with the Trademarks Act and Regulations.
How to respond to any CIPO requests?
During the examination process, CIPO may send you requests for more information, corrections, clarifications, or amendments to your application. For example, CIPO may ask you to:
Provide evidence of use or proposed use of your mark in Canada
Provide evidence of secondary meaning or acquired distinctiveness of your mark
Provide translations or transliterations of any foreign words or characters in your mark
Disclaim any unregistrable elements in your mark
Narrow down or specify your list of goods or services
Consent to the registration of a similar mark by another applicant
You need to respond to these requests within the specified time limit, usually six months from the date of the request. If you fail to respond or comply with the request, your application may be abandoned by CIPO.
You can respond to these requests online through CIPO’s website. You may also need to pay additional fees for some requests, such as amendments or extensions of time.
If you have any questions or concerns about these requests, you should consult your Canadian attorney or agent who can advise you on how to best respond and protect your interests.
How to receive your certificate of registration?
If your application meets all the requirements and passes the examination process, CIPO will approve your mark for advertisement in the Trademarks Journal. The Trademarks Journal is an official publication that lists all the trademarks that are approved for registration in Canada.
Your mark will be advertised in the Trademarks Journal for two months. During this period, anyone can oppose your mark if they believe that they have valid grounds to do so. For example, someone may oppose your mark if they think that it is confusingly similar to their own mark, or if it is contrary to public policy or morality.
If no one opposes your mark within the two-month period, or if any opposition is resolved in your favor, CIPO will register your mark and issue you a certificate of registration. Congratulations! You now have a registered trademark in Canada that gives you exclusive rights and protection for 10 years. You can renew your registration every 10 years by paying a renewal fee.
What is the Madrid Protocol and how does it work?
The Madrid Protocol is an international treaty that allows you to file a single trademark application in multiple countries at once. It simplifies and streamlines the process of obtaining trademark protection in different jurisdictions around the world.
As a US business, you can use the Madrid Protocol if you have a trademark application or registration in the US. You can file an international application through the US Patent and Trademark Office (USPTO), which will act as your Office of Origin. You can designate Canada and any other countries that are members of the Madrid Protocol as your Contracting Parties, where you want to register your mark.
Your international application will be sent to the World Intellectual Property Organization (WIPO), which administers the Madrid Protocol. WIPO will check your application for formalities and assign it an international registration number and date. WIPO will then notify CIPO and the other designated offices of your application.
CIPO and the other designated offices will examine your application according to their own national laws and procedures. They will either grant or refuse protection for your mark within 18 months from the date of notification by WIPO. If they grant protection, they will issue you a statement of grant of protection. If they refuse protection, they will issue you a provisional refusal, which you can challenge or overcome with the help of a local attorney or agent.
If your mark is protected in Canada and the other designated countries, you will have a bundle of national rights that are equivalent to having registered your mark directly with each office. You can manage and renew your international registration through WIPO, without having to deal with each office separately.
What are the benefits and challenges of using the Madrid Protocol?
The Madrid Protocol can offer several benefits for US businesses that want to file a trademark in Canada and other countries, such as:
Saving time and money by filing one application in one language and paying one set of fees
Simplifying the process of updating or renewing your registration through one central authority
Expanding your market reach and protection to over 120 countries that are members of the Madrid Protocol
Allowing businesses to use their US attorney to file their international trademark applications through the Madrid Protocol.
However, the Madrid Protocol also has some challenges and limitations that you should be aware of, such as:
Depending on the exchange rate and the number of countries you designate, the fees for using the Madrid Protocol may be higher than filing directly with each office
Being subject to a dependency period of five years, during which your international registration may be affected by any changes or cancellations of your US application or registration
Having to comply with the laws and procedures of each designated country, which may vary widely and require local assistance or representation
Having to monitor and respond to any communications or requests from WIPO or each designated office, which may be in different languages and time zones
Filing a trademark in Canada as a US business can be a smart move to protect your brand, prevent confusion, and build goodwill with your customers in Canada. However, it can also be a complex and lengthy process that requires careful planning and preparation.
You need to choose a strong mark that is distinctive and not descriptive of your goods or services. You need to hire a Canadian attorney or agent if you don’t have an address in Canada. You need to conduct a trademark search to make sure your mark is available and not conflicting with any existing marks. You need to file a trademark application with CIPO and pay the fees. You need to respond to any requests from CIPO during the examination process. And you need to receive your certificate of registration and renew it every 10 years.
Alternatively, you can use the Madrid Protocol to file a single trademark application in multiple countries at once, including Canada. This can save you time and money, simplify the process, and expand your market reach. However, it also has some challenges and limitations that you should consider before choosing this option. Contact us to learn more about filing a your trademark in Canada.