As a Canadian business Owner, you will want to consider filing a US trademark Application that can protect your brand identity in the United States as your business grows and enters the US market. A US trademark registration helps protect your firm’s name, its logo, and/or your slogan from other business owners who are trying to use them and thus hurt the perception of your company’s trademark and brand image.

Below, we’ll walk you through every step in the process of registering a US trademark as a Canadian business owner, but most importantly, we are going to talk about critical areas such as how to conduct a US Trademark search and how to apply, what to expect in relation to the future management of your trademark. Now, whether your business is small and still growing or it’s operating on a large scale, this guide is just what you need to help arrange everything smoothly.

Why Should a Canadian Business Register a US Trademark?

The U.S. marketplace represents a huge opportunity for Canadian firms. By expanding your operations or sales into the United States, you open up possible significant growth. This potential comes with risk, as brand infringement risk, in particular, increases.

Here’s why registering a US trademark is crucial:

  • Legal Protection: A US trademark would grant you exclusive rights in your use of a brand name, logo, or slogan in the sale and/or advertising of those respective goods or services throughout the United States.
  • Enforcement Power: You may, with a registered US trademark, sue people who are infringing on your brand.
  • Brand Reputation: You would add to your brand’s identity and build a better reputation, which will make your business more attractive for U.S. customers, partners, and investors.
  • Increase International Protection: A U. trademark can serve as a basis through which your trademark could be filed in other countries using treaties such as the Madrid Protocol.
    Said this way, your United States trademark enables your brand to be yours alone, even during the competitive United States market.
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Step 1: Conducting a US Trademark Search

But before you can even begin the process of trademark application, you must conduct a US trademark search to verify that your desired trademark is not already registered by another entity. This is to save your time and money over applying for a trademark that could get rejected.

Why a US Trademark Search is Important

A complete US trademark search will ensure that your desired name, logo, or slogan is not in use by someone else. The United States Patent and Trademark Office only grants trademarks where the identifier is unique, for if someone has already obtained similar registration, your application may be refused.

You can search for trademarks on the USPTO’s Trademark Electronic Search System (TESS). If you engage the services of a trademark attorney or a professional search service, you might also receive a more in-depth search, considering possible conflicts, including unregistered or “common law” trademarks.

Steps for a US Trademark Search:

  1. Visit the USPTO’s TESS database.
  2. Enter your desired trademark name, logo, or slogan.
  3. Review results for any identical or similar marks in the same industry or classification.
  4. Analyze “live” trademarks, meaning active trademarks, as they can impact your application.

Note: If your trademark is too similar to an existing one, especially in the same category of goods or services, you may need to rethink your branding strategy or modify the mark.

Step 2: Determine the Basis of Your Filing

  • You will have two major options for filing a US trademark as a Canadian business:
  • “Use in Commerce” Basis (Section 1(a)): Sometimes, an application can be filed based on the applicant’s current use of the mark in U.S. commerce.
  • “Intent to Use” Basis (Section 1(b)): This is if you intend to use the mark in commerce in the United States at a later date, but you are not using it as of this date.

Which Basis is Right for You?

If your business is already operational in the U.S. and you’ve been using your brand publicly (on products, packaging, or marketing materials), you can file under the “Use in Commerce” basis. You’ll need to submit proof, such as product labels, sales receipts, or advertising material.

If you’re not yet using the trademark in U.S. commerce but plan to expand in the near future, the “Intent to Use” basis is a better fit. Once the USPTO approves your trademark, you’ll receive a Notice of Allowance, and then you have six months to provide proof of your trademark’s use.

Step 3: Choosing the Right Trademark Class

Trademarks are classified in categories based on the goods or services they represent. Selection of the correct class(es) for your United States trademark is a significant part of obtaining appropriate protection. The USPTO utilizes the International Classification of Goods and Services, sometimes referred to as the Nice Classification. There are 45 classes: 34 for products and 11 for services. Some common classes include:

  • Class 9: Computers, software, and electronics.
  • Class 25: Clothing and footwear.
  • Class 35: Advertising and business services.

Multiple Classes and Fees
You can file your trademark under multiple classes, but each class comes with additional filing fees. For example, if you’re registering a logo used both on clothing and as part of a marketing service, you’ll need to file in Class 25 and Class 35, with separate fees for each.

Consult the USPTO’s Acceptable Identification of Goods and Services Manual to determine the exact class(es) applicable to your business.

Step 4: Filing Your US Trademark Application

Once your US trademark search is clear and you’ve determined your filing basis and classes, it’s time to file your trademark application with the USPTO. The application process involves several key steps:

  1. Create a USPTO Account: You’ll need to create an account on the USPTO’s Trademark Electronic Application System (TEAS).
  2. Complete the TEAS Application: The TEAS system will guide you through the required forms and information, including:
    – Applicant’s name and address (your business details as a Canadian entity).
    – Basis for filing (Section 1(a) or Section 1(b)).
    – Trademark representation (word mark, design mark, etc.).
    – Goods or services classification (based on your research).
  3. Pay the Filing Fee: Fees vary depending on the type of application (TEAS Plus or TEAS Standard) and the number of classes. For example, the TEAS Plus option costs $250 per class.

Trademark Drawing and Specimen

If you’re trying to trademark a logo or design, you’ll need to submit a trademark drawing. That might just be a line drawing of the mark in simple form. If you apply under Section 1(a), you will also have to provide a specimen—an example that will prove the mark is already in use in commerce.

Step 5: Monitoring and Maintenance of Your US Trademark

After that, your application will be reviewed in due course by the USPTO, which may take some months. The USPTO may request additional information or require further clarification, or they may issue an Office Action if they find any issues with your application.

If your mark is approved, it will be published in the Official Gazette, which gives others 30 days to file an opposition against your trademark. Following this period of opposition, your mark will either be registered or you will receive a Notice of Allowance if you filed on an Intent-to-Use basis.

Ongoing Maintenance
US trademarks require periodic maintenance to remain active. Between the 5th and 6th year after registration, you must file a Declaration of Use (Section 8), and between the 9th and 10th year, a Renewal Application (Section 9). Failing to file these documents could result in the cancellation of your trademark.

Costs and Timeline for US Trademark Registration

Filing a US trademark isn’t free, and it requires patience. Here’s what you can expect:

  • Filing Fees: $250 to $350 per class, depending on the TEAS application form.
  • Legal Fees (optional): If you hire a trademark attorney, fees can range from $500 to $2,000, depending on the complexity of your case.
  • Timeline: The USPTO typically takes between 8 to 12 months to process a trademark application, but this can be extended if there are any challenges or oppositions.

Common Mistakes to Avoid as a Canadian Applicant

  1. Failing to Conduct a Proper US Trademark Search: Overlooking the search process can lead to costly denials. Make sure to search thoroughly.
  2. Incorrect Classification: Choosing the wrong class for your goods or services can limit your trademark’s protection.
  3. Incomplete Application: Ensure you provide all necessary information and documents upfront, as missing details can delay the process.
  4. Neglecting Post-Registration Maintenance: Many businesses forget to file their maintenance documents, resulting in trademark cancellation.

Conclusion: Safeguard Your Brand in the U.S. Market

Expanding into the U.S. market can open up significant opportunities for Canadian businesses, but it also requires protecting your brand through proper legal channels. By conducting a thorough US trademark search and following the step-by-step process outlined in this guide, you can register a US trademark with confidence and ensure your brand remains secure.

If you’re unsure about any step, it’s wise to consult with a US trademark attorney to avoid mistakes and streamline the registration process. Safeguarding your intellectual property in the U.S. is an investment that can protect your business from future legal battles and boost your brand’s credibility in a competitive marketplace.