In general, U.S. trademark law is very similar to Canadian. The same general principles apply in terms of the application and registration process and in terms of dealing with disputes. However, there are several points that should be noted:
- Application Charges – In Canada, there is presently a single application charge of $250. This is likely to change before the end of 2016. It will then be like the U.S., where the application charge is based on the items covered and the number of ‘classes’ they fit into.
- Supplemental Register – For marks that would otherwise be too descriptive to register, registration is possible on the Supplemental Register.
- Priority Filing – If you file a U.S. application within six months of the Canadian application, your U.S. application date will be backdated to the date of your Canadian application.
In Canada there is currently a single charge for the application, regardless of the number of items involved. However, in the U.S. (and most of the rest of the world) the government’s application charge depends on the nature and number of items to be covered. In particular, all wares and services are divided into 45 classes, and the U.S. government charges $225 – $325 USD per class. Therefore, when applying for a U.S. trademark we must ‘translate’ the Canadian description of wares and services into something that will be acceptable to the U.S. Patent and Trademark Office (USPTO). This involves, among other things, dividing the Canadian wares and services into the classes that the U.S. uses. Canada is expected to adopt the Class System by the beginning of 2017.
PRINCIPAL AND SUPPLEMENTAL REGISTRIES
While in Canada there is only one trademark register, the U.S. has two registers – Principal and Supplemental.
This is the preferable register, as it has several advantages. For example, it gives you trademark protection across the United States, Also, if you do end up in a dispute, the registration itself is the only evidence you need of your exclusive right to use the mark. Your trademark may also be registered with the U. S. Customs Service to block importation of goods bearing an infringing mark.
The only requirement for registration on the Supplemental Register is that a mark be capable of distinguishing goods or services, not that it actually do so. It is frequently used for marks that otherwise would be too descriptive for the principal register.
This registration does not confer any additional rights for the mark beyond those provided by common law. Marks registered on the Supplemental Register are not subject to opposition proceedings, but they may be cancelled at any time by a court. Holders of such marks are still permitted to sue for trademark infringement.
There are a number of advantages of Supplemental Register registration over no registration at all. It gives notice of the mark to anyone who searches the USPTO records. It also establishes federal court jurisdiction in an infringement action. In addition the (R) symbol may be used. Finally, such a registration can block registration of a confusingly similar mark to a third party.
After 5 years on the supplemental register, which means at least 5 years of use, one can apply to be registered on the Principal Register by claiming “acquired distinctiveness”.