Canadian trademarks are not valid in the United States.
It’s as simple as that. There’s no qualifications or exceptions to this rule.
Canada and the United States have separate legal systems. If you want the exclusive right to use a name in both countries, you have to obtain trademark registrations from both governments.
This is something that one of our clients is learning the hard (and expensive) way.
That client is re-branding their entire business. The really great name they’ve been using in Canada for the last 5-years isn’t available for them to use in the United States. If they sell their products to US customers using this name, they will be at risk of infringing a US company’s trademark rights.
Unrelated, but related. Know what else the United States legal system has that we don’t? Astronomical damage awards in court proceedings. That’s what.
Back to our client’s dilemma. Faced with a potential trademark infringement suit in the United States, their choices are:
- limit their futures sales to Canada,
- find a new brand name for products sold in the United States, or
- change their brand name so that it can be used everywhere.
All really painful choices.
They’ve decided to re-brand because it has the best long-term outlook for their business. But imagine being in this position.
Imagine having to invest in finding a new name that reflects your brand promise and also speaks to the hearts of your customers. Was it easy the first time?
It’s even harder the second time around, because you’re now fixated on a great name that got you where you are today.
Imagine going through once again searching a new name’s availability in Canada but also the US this time and starting the years-long Canadian trademark registration process all over again.
Imagine having to make the very tricky transition from the old brand to the new, without losing revenues or customers.
It’s like you were driving full speed ahead on the expressway, making great time to your destination, when the car you’re driving breaks down. The “car” being a metaphor for your brand name (in case you didn’t pick up on that).
Your car just isn’t going to be able to take you any further.
You’ll need to pull over, search for a new and better car, and hope to heck you can afford to buy it.
Replacing a car (or brand name) is an incredible waste of time, money and effort.
There is, however, a simple two-step solution to avoid being left on the side of the road by your brand name.
It will cost your startup slightly more at the outset, but it could end up saving you thousands in wasted time, money, and effort over the long haul.
Thoroughly research the first car you plan to drive. Don’t just pick the first shiny one with heated seats and 0% financing. Look behind the wheels and under the hood to make sure the car is solid, dependable and will get you everywhere you want to go.
In trademark terms, this means that you should thoroughly investigate the availability of your proposed business name in Canada (where you are starting), but also in the United States (where you want to eventually go).
When you search in Canada, also search the US federal and state trademark registers, search the internet and search US business names. If your proposed name, or something very similar, is being used in your industry or a related one, walk away from that name. Find another name, investigate it, and only stop when you get to a name that is available for you to use in both Canada and the United States.
If searching feels daunting to you, reach out to us at Mason PC. We are trademark lawyers and we provide in-depth Canadian and United States trademark searches all the time.
Ensure you have the paperwork that will let you drive your car across the border and into the United States.
In trademark language, this means file a United States trademark application. This will secure your right to own your brand name in that country. A Canadian trademark registration will not give you that right. However, a Canadian trademark application can be used as the basis for your US trademark registration. So long as you file your US trademark application within 6-months of your Canadian application, they will be considered to be filed on the same day.
It’s just a little trick we use to spread some of the costs of protecting trademarks in the United States, without losing your place in line on the United States trademarks register. You’re welcome.
If you follow this advice with the first name that you choose for your business, you won’t need a second name. There will be a much better chance of avoiding potholes and roadblocks (i.e. limited markets and infringement suits) as your business grows and expands into the United States.
At both Mason PC and Markably®, we offer a range of Canadian and United States trademark registration services. Book a free consult today to get started on protecting your brand everywhere you do business.