By Trish Sawhney
For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. The information in these guides have been provided by the Canadian Department of Industry. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.
This week’s guide focuses on protecting your trademarks in the United States.
Where is IP registered in the United States?
The United States Patent and Trademark Office (USPTO) is the U.S. federal agency responsible for granting patents and registering trademarks.
Trademarks in the United States
What is it: In the U.S., as in Canada, a trademark is a combination of letters, words, symbols and/or designs that distinguishes your company's goods and services from those of others in the marketplace. The USPTO also accepts applications for the registration of non-traditional trademarks such as scent and sound.
Filing System: The U.S., like Canada, follows a "first-to-use" system for trademark rights. This means that whoever used the mark first in the U.S. marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with the USPTO as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered.
Registration Period: A trademark is registered for 10 years and can be renewed every 10 years.
Non-Use: If you are not regularly using your trademark in the U.S. marketplace it may be subject to a dispute or challenged for non-use.
IP Enforcement in the United States
There are numerous ways to enforce your rights against unauthorized use of your IP in the U.S.:
• The U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security, helps prevent counterfeit and pirated goods from entering the U.S. The CBP can seize and detain imported goods which violate U.S. IP rights.
Registered trademarks and copyright can be recorded electronically with the CBP. This is a quick, easy, and cost-effective way to protect and enforce IP rights. CBP officers can access a database of recorded IP and monitor imports to prevent the transport of counterfeit goods and goods bearing infringing trademarks.
• Counterfeiting, piracy and other potential contraventions of IP rights can also be reported to the National Intellectual Property Rights Coordination Center, which investigates sources of goods that violate IP rights to identify and prosecute organizations and individuals that produce, smuggle, or distribute such goods.
• Legal proceedings can be started. Mediation and arbitration, which are generally more informal, less adversarial, cheaper, and settlement-focused, can be used as alternatives to going to court.
• A "notice-and-takedown" process may be initiated by copyright holders by sending a takedown notice to an Internet service provider, search engine, host, or other type of site owner/manager to remove from a website material that is infringing their copyright.
Interested in expanding your trademark protection into the United States marketplace? Contact us today.
By Sukey Omran
Clancy PC is honoured to be recognized as one of Canada’s top trademark firms by the World Trademark Review. A special congratulations to Clancy PC’s very own Paula Clancy who has also individually been recognized for another consecutive year as one of the world's leading trademark professionals.
We are very grateful to be recognized for our excellence in the area of trademarks and this designation is a testament to our drive in providing quality service. We take pride in continually growing and developing our skills in trademark law and it is a privilege to serve our clients.
Check us out in the World Trademark Review!
By Paula Clancy
Several of our foreign clients who have filed a Canadian designation using the Madrid Protocol have contacted us to inquire about the issuance of a "Notice of Possible Opposition" in relation to their application. We thought it would be helpful to explain why CIPO is issuing these Notices, even though opposition proceedings have not been commenced.
CIPO is obligated to issue any notice of provisional refusal in respect of Protocol Applications within 18 months of being notified of the Canadian designation. If such notice is not issued within the 18 months, the application is deemed to be approved and will proceed to registration.
The issue is that there are currently significant delays in prosecution at CIPO. For non-Protocol Applications, it is taking an average of 24 months for an application to be examined. Moreover, there may be situations where CIPO approves the application within the 18 month period, however, an opposition is commenced after the deadline. It is for this reason that CIPO has been pre-emptively issuing these notices in relation to Protocol Applications, which in turn allows it to send a provisional refusal beyond the 18-month window. Therefore, if you receive one of these notices, this does not necessarily mean that an opposition has been commenced.
We recommend that foreign associates appoint a Canadian Trademark Agent to help monitor the status of their clients' applications. Otherwise, CIPO will correspond directly with the applicants. Of course, we would be pleased to appoint our firm as agent of record on behalf of your clients.
By Sukey Omran
February is black History month. We acknowledge this as a time to reflect on the important history of Black people. In this month we will celebrate the achievements of the Black community, immerse ourself in learning and allyship, and acknowledge the complex reality faced by many in the Black community.
This month we encourage you to support Black owned businesses, learn about Black stories, and most importantly check in with and listen to the Black people in your community.
While there is much work to be done, we look forward to this month of learning and reflection. Our team is committed to diversity and inclusion, and we will continue to champion women, BIPOC, LGBTTQQIAAP and all others who enrich the fabric of humanity through diversity.
By Sukey Omran
Since COVID-19 has become a harsh reality the USPTO has reported over 600 trademark applications that use or refer to COVID. Many of these applications are said to have been applied for by “trademark trolls”, a term used to describe applicants who want to register a trademark without intent to use the mark, or in bad faith. However, since the USPTO requires actual use of the mark in order to proceed to registration, most of these “trademark troll” applications will likely fail since trolls are unlikely to demonstrate use of the mark in commerce.
The emergence of trademark trolls in the United States touches upon an interesting question regarding how jurisdictions such as Canada, who have eliminated the use requirement for the purposes of obtaining a trademark registration, will repel trademark trolls. The amended Canadian Trademarks Act has been in force for almost two years now, and it introduced new provisions which provide for 'bad faith' as a new ground of opposition and invalidation. Of course, Canadian registrations may also be cancelled for non-use after the third anniversary from the date of registration. Time will tell if these provisions will be sufficient to curb the activities of trademark trolls in Canada.
If you have questions about what constitutes 'bad faith' or how to block a trademark troll, please contact us at Clancy PC.