United States: Expand Your Brand Into the U.S.

Last Updated: October 21 2004
Article by Kenneth D Suzan

This article originally appeared in the October 1, 2004, issue of The Lawyers Weekly.

Imagine a toy company in Toronto gearing up to globally market a mechanical marvel by Christmas. At the same time, a hotel in Montreal is readying a new Web site that is expected to be viewed by prospective American revelers planning their New Year’s Eve celebrations. Across the country, in Vancouver, a clothing manufacturer has grand plans to set a fashion trend next fall with its new line of clothing and accessories. All three Canadian companies have their eyes set on selling and advertising their goods and services in the United States and expanding their brands across international borders.

Central to brand expansion into the United States is the strategic development of a strong trademark/service mark portfolio that sufficiently protects the source identity of a company’s important intellectual property assets. Building such a portfolio in the United States carries significant benefits for Canadian companies. Competitors are likely to keep a close watch on marks used (or anticipated to be used) in a particular industry. Inclusion of a company’s marks in a government database accessible by anyone worldwide at USPTO.GOV should send a strong signal to competitors to avoid choosing a similar brand name that is likely to cause confusion in the marketplace. This advantage starts several weeks after filing an application as records of newly filed trademark and service mark applications are constantly added to the database at USPTO.GOV. Other benefits of registering marks with the United States Patent and Trademark Office include (1) nationwide trademark and service mark priority rights, (2) presumption of validity and exclusive rights to use the mark in the United States, (3) availability of "incontestable" status after five years of continuous use (a type of immunity from many types of challenges that can be filed by third parties against the registration), (4) reliance by the USPTO upon a federal registration in rejecting a third party’s application that is confusingly similar, (5) ability to use the registration symbol, "®", to give nationwide notice of trademark rights, (6) potential availability of recovering treble damages and attorneys’ fees in an infringement proceeding, and (7) ability to block the importation of infringing goods through the assistance of the U.S. Customs Service by recording the trademark registration details.

Before rolling out new products or advertising services in the United States, it is recommended that companies conduct a full U.S. trademark/service mark search. With the assistance of U.S. trademark counsel, companies should assess whether a particular brand name, slogan, or logo is available for use and registration in the United States. A thorough search should include research and analysis of pending and registered federal trademarks and service marks, state trademarks and service marks, common law marks, filings made pursuant to the Madrid Protocol, Internet domain names, and Web sites. Receiving the green light from counsel is only a preliminary step for brand expansion into the United States. Canadian companies seeking to conduct business in the United States should also consider registering their trademarks and service marks with the USPTO. The benefits of registration will likely outweigh the initial costs of obtaining the registration. Presently, the official filing fee charged by the USPTO is US$ 335.00 per class of goods or services listed in the application. It is possible to file a multiple class application covering a wide range of goods and services. Companies should also budget for legal fees and costs associated with the preparation and prosecution of the application.

Enjoying the benefits of a United States trademark or service mark registration may not be possible if a Canadian company is unable to demonstrate its priority rights in a particular mark in the United States. Use of a mark in Canada does not automatically confer priority rights in the United States. Therefore, the adage "timing is everything" can be considered a guiding principle for brand expansion into the United States. In order to secure valuable priority rights in the United States, it is essential that trademark or service mark applications be filed early on in the development of the product or service.

Canadian companies seeking to file applications to register marks in the United States may base their applications on use (shipping goods into or advertising and rendering services in the United States), intent-to-use (based upon a bona fide intent to use the mark in commerce), ownership of a Canadian or other non-U.S. registration, or ownership of a Canadian or other non-U.S. trademark application (trademark priority is accorded provided that the U.S. application is filed within six months of filing the Canadian or other non-U.S. trademark application). It is usually the case that a Canadian company with plans to expand into the United States will already own a Canadian trademark registration or a pending Canadian application for the same goods or services. Ownership of these intellectual property assets should be communicated to counsel in the United States before filing an application in the United States. Such information is helpful in determining the availability of basing trademark rights pursuant to Section 44 of the Lanham Act. Under this section, non-U.S. nationals may identify the non-U.S. application or registration, such as a Canadian application or registration, along with a statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the underlying goods or services. The advantage to such a Section 44 filing is that a Canadian company need not prove use of the mark in the United States in order to obtain a United States registration. Moreover, dates of use or trademark specimens are not required at the time of filing. It is important to note that the mark must be used in commerce with or in the United States after the registration issues in order to maintain the registration. Failing to do so places the registration at risk for cancellation.

Another strategic advantage offered under Section 44 of the Lanham Act is the ability to claim trademark priority rights in the United States based upon an earlier filed application in another country under Section 44(d). This option is only available if the U.S. application is filed within six months of the filing date of the non-U.S. application. For example, if an application is filed in Canada on October 1, 2004, the corresponding application must be filed with the USPTO no later than April 1, 2005 in order for the applicant to claim the earlier October 1, 2004 priority filing date in the United States. This earlier date could prove to be very helpful during trademark priority disputes with third parties with respect to priority rights in the United States. An applicant under Section 44(d) of the Lanham Act must still assert a bona fide intent to use the mark in commerce on or in connection with the underlying goods or services.

In the absence of Canadian or other non-U.S. applications or registrations, Canadian companies may also base their applications upon use in commerce or upon intent-to-use. Critical to brand development and expansion into the United States is the prompt filing of an intent-to-use trademark application when applicable. Under the intent-to-use system, no use need be made or shown in the United States at the time the application is filed. However, proof of use will be required to be filed after a Notice of Allowance issues. The Notice of Allowance can be expected to issue eleven or twelve months after the application is filed provided the USPTO has not issued an Office Action and third parties have not opposed the application. In addition, the Canadian company may seek extensions of time to prove use in commerce. Filing an intent-to-use trademark application requires the Canadian company to simply have a bona fide or "good faith" intent to use the mark in commerce in connection with its goods or services. Priority in the mark can be obtained before outlaying considerable funds for advertising, marketing, and packaging. It is helpful to keep records consisting of corporate minutes, business plans, contracts, receipts or other evidence should the company be required, for example, during litigation enforcing its trademark rights, to demonstrate that it had a bona fide intent to use the mark in the United States when it filed its application with the USPTO.

From start-ups eager to enter the American market, to companies that have successfully built brands that have spanned borders worldwide, it is critical to have a trademark strategy in place now and for the future. Making the necessary trademark filings today will likely serve pivotal roles in future opportunities for licensing and franchising, combating infringing and gray market goods at the border, and providing the best level of protection for a company’s valuable intellectual property assets.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions