Canadian Businesses Now Required to Retain a U.S. Trademark Attorney for USPTO Submissions

by Zach Stevens

Seeking a U.S. Trademark Attorney? We Can Help

Effective as of August 3, 2019, Canadian patent agents no longer have the authority to represent Canadians before the United States Patent and Trademark Office (USPTO). All Canadian trademark applicants, registrants, or parties must be represented by a licensed U.S. trademark attorney.

Why has this rule been put in place?

U.S. Trademark AttorneyThe U.S. trademark register plays a major role in how businesses make legal decisions regarding their brands. The USPTO needs the right tools to ensure all registrants and applicants are in compliance with trademark law. For the benefit of its users, registers must maintain accuracy and integrity.

The reason for this change is the mounting number of foreign-domiciled trademark registrants, parties, and applicants whose filings have been either inaccurate or fraudulent. Put simply: they haven’t been in compliance with the rules of USPTO or U.S. trademark law.

The best way to avoid these problems is requiring the assistance of an official U.S. trademark attorney for foreign trademark submissions.

What are the goals of this new law?

  • To maintain the U.S. trademark register’s integrity.
  • To ensure USPTO customers are in compliance with USPTO regulations and U.S. trademark law.
  • To improve the accuracy of USPTO trademark submissions.

How to Register a Trademark in Canada

Register in Canada First

If you’re a Canadian resident and seeking to get your trademark registered, start by filing it for registration in Canada. 

Within six months of filing in Canada, you should then submit it to the USPTO. The reason for this is so that you can rely on the priority date of your Canadian application in the U.S. as well. If someone seeks to file a similar mark following this date, they won’t be approved.

Hire a U.S. Trademark Attorney

You’re probably already familiar with the Canadian trademark registration process and how arduous a task it can be. Now consider that U.S. trademark registration has its own unique technical requirements you might not be familiar with. Trying to register a Canadian trademark with the USPTO on your own is likely to get you an Office Action (a document requiring revisions). 

Simply put: hiring a U.S. trademark attorney for Canadian filings is not only legally required, it will also make the process much easier for you. 

Conduct a Trademark Search

U.S. Trademark AttorneyAt the bare minimum, you need to have a mark in mind that is unique enough to be accepted by the USPTO; they won’t approve anything that is “confusingly similar” to an existing trademark. For this reason, you need to engage in a comprehensive trademark search to see if the one you have in mind already exists.

One of the major incentives for a trademark search is so that you don’t get rejected by the USPTO after you’ve already paid your fees. 

Remember, DIY trademark searches can only get you so far. A U.S. trademark attorney can help you conduct a comprehensive trademark search and, if he or she does find a mark that is the same or similar to the one you had in mind, they can help you make the changes necessary to get it accepted by the USPTO.

File Your Application

When your trademark search is complete and you have a unique mark, have your U.S. trademark attorney help you to get it filed.

It’s a better idea to file directly in the United States, as the whole process will go much faster. Your U.S. trademark attorney will also know the technical ins-and-outs of filing with the USPTO, so you’ll avoid unnecessary delays and other headaches.

Keep Your U.S. Trademark Attorney

This is important for a number of reasons. First and foremost, the USPTO does not enforce your trademark – that’s up to you. And if you don’t have a competent U.S. trademark attorney working with you, it can be difficult to do this by yourself.

The last thing you want after having your mark certified is another party using it, or something confusingly similar to it, causing confusion and damaging the reputation of your brand.

Monitoring your brand for infringements of this kind can be time-consuming. Fortunately, many U.S. trademark attorneys offer monitoring services. Not only can they keep an eye on your trademark for you, they can also take the legal actions necessary to enforce your trademark if an infringement occurs. 

Trademark enforcement often comes in the form of a cease-and-desist order backed with the threat of legal action. You will want an attorney who knows how to construct these and, if necessary, to follow through if legal action is required.

Another factor to consider is meeting all renewal deadlines so that your trademark doesn’t expire. Your U.S. trademark attorney can help with this as well.

MZJ – U.S. Trademark Attorneys

U.S. Trademark AttorneyMZJ can help Canadian parties seeking to file their marks with the USPTO, as well as ensure trademark protection and enforcement once the mark has been accepted.

With MZJ, you’ll get:

  • Flat Fees – you know what you’ll pay beforehand.
  • Experience – Over 30 years of combined legal experience.
  • Protection – Your trademark will be kept distinct in the global economy.
  • Saved Time – Your application will get filed quickly with our streamlined process.
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