When someone asks How to Trademark a Name in Canada there are two answers since there are two ways to trademark a name Canada. It’s similar to filing for an international trademark in other countries. One can file directly in Canada using the Brandaide International Trademark Attorney Network.
The second option is to use the Madrid Protocol treaty system by filing in the U.S. Trademark Office. Canada is one of the last countries in the world to have joined the Madrid Protocol so at first glance Madrid Protocol would seem to be the easiest way to file. There are significant pitfalls, however, which are discussed in Madrid Protocol Registration Traps.
We’ll look at both ways to file as well as the pitfalls so you can make a smart choice!
How to trademark a name in Canada using a
Canadian trademark attorney
After much experience, we almost answer the question of how to trademark a name in Canada with this advice. File directly using a Canadian trademark attorney. Here’s why. If Canada is only one of several countries designated in the same Madrid Protocol application, the cost of the Canadian attorney filing will almost always be less than a Madrid Protocol application for only Canada.
The U.S. Trademark Office charges a setup fee for a Madrid Protocol application, and WIPO (the World International Property Organization) also charges an administrative fee in addition to the filing fees charged by the Canadian Intellectual Property Office. My last several filings have been direct filings using our wonderful Canadian trademark counsel for another reason.
Your Canadian trademark application will almost always receive an Office Action that requires a Canadian trademark attorney to respond. And, due to delays and problems receiving Office Actions, deadlines can be missed. When a Canadian attorney is on the file, they also receive the Office Action. Without a local Canadian attorney, the Office Action is sent to WIPO, who then forwards the application to U.S. counsel. We recommend scheduling a time to meet with us to plan your foreign trademark filings.
How to trademark a name in Canada using the Madrid Protocol
The Madrid Protocol is a treaty that allows a foreign trademark owner in any member country to file a trademark application in any other member country by filing either in their home country or at WIPO in Geneva. However, there are two big pitfalls to be aware of when filing by using the Madrid Protocol.
The U.S. Trademark Application Must be Approved for Registration in the U.S.
All Madrid Trademark applications succeed or fail only to the extent the U.S. application successfully registers. I had a client who, before engaging our services, had invested significant fees to file in 10 foreign countries based upon her U.S. pending application. The USPTO approved her application, but a third-party trademark owner opposed her application.
She did not receive professional expert advice to defend her U.S. application and agreed to restrict her U.S. application. As a result, she lost all of the filings in every other country! The bottom line is your U.S. trademark filing must be rock solid or you will lose all the foreign filings when the U.S. application fails. Learn more here.
U.S. applicants using Madrid Protocol can only protect the identical goods and services that are claimed in the U.S. application
The decision as to how to trademark a name in Canada should also be based upon understanding that U.S. trademark owners have a distinct disadvantage when using Madrid Protocol to trademark a name in Canada. Most foreign countries do not require the owner to actually use the trademark to sell the goods and services. This means, that foreign owners routinely file for many goods and services that they will never sell and have no intent to use.
The U.S. is just the opposite. For example, if the only item of clothing you sell only is tee-shirts, you can only protect tee-shirts in every other foreign country when the filing is done with Madrid Protocol. On the other hand, when you file the same application using a local Brandaide International Trademark Attorney, you could file for tee-shirts, jackets, coats, pants, shirts, and any other item in the same classification, even if you have never sold those items in the U.S.
Schedule a time to meet with us here and we’ll help you decide how to trademark a name in Canada.