U.S. Isn't Everything – The Importance For U.S. Entities To Obtain Trademark Protection Abroad (Yes, That Includes Canada)

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The author of the lyrics for Canada's national anthem, "O Canada," probably didn't have trademarks in mind when he wrote "we stand on guard for thee."
United States Intellectual Property
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The author of the lyrics for Canada's national anthem, "O Canada," probably didn't have trademarks in mind when he wrote "we stand on guard for thee." But a recent trademark infringement win for a Maryland-based U.S. non-profit corporation in Canada shows that Canadian courts will guard against consumer confusion and enforce trademark rights even when the trademark owner is a U.S. company and the defendant is Canadian. The case also highlights the importance of obtaining trademark protection in jurisdictions outside of the United States–particularly in U.S.-bordering Canada.

The U.S.-based Telegu Association of North America (which we'll refer to as US-TANA) brought suit in a Canadian Federal Court against a Canadian corporation using the same name and identical trademarks. US-TANA owns US and Canadian trademark registrations for the mark TANA, and also claimed rights in the marks TANA & DESIGN and TELUGU ASSOCIATION OF NORTH AMERICA. US-TANA operates a website at tana.org and several social media accounts, provides printed materials such as a monthly newsletter, and hosts numerous events that are attended by members across North America. The Canadian Court recognized that the US-TANA's use of the TANA-related marks was more extensive in the United States. Nevertheless, the Canadian Court noted that US-TANA had continuously used its marks in Canada beginning at various points since 1992.

The Canadian company (which we'll refer to as CA-TANA) used the identical name, Telugu Association of North America, and was incorporated in 2020 – two-months after one of its founder's membership with US-TANA was terminated. In addition to adopting an identical name, CA-TANA registered the domain tana.live and used similar TANA and TANA & DESIGN marks.

The Court ruled in favor of US-TANA, finding that the CA-TANA's use of and identical company name, identical trademarks, and confusingly similar trademarks violated several sections of Canada's Trademark Act. Key to the Court's ruling was the fact that US-TANA had used its marks, and accumulated goodwill among consumers, in Canada. While the Court's ruling is foreseeable, the case holds several reminders for U.S.-based companies operating beyond the confines of the United States.

First, register your trademarks outside of the United States. U.S. companies should, costs permitting, apply for trademark registrations in those jurisdictions where they do business and where they plan to do business in the future. In this case, US-TANA's registration of certain marks in Canada provided specific causes of action and remedies that would have otherwise been unavailable to it under Canadian law.

Second, use your trademarks. While not available in all jurisdictions, US-TANA's use of the its marks in Canada provided it with causes of action for common law use of the marks. In addition, US-TANA's use of the marks in Canada allowed US-TANA to validate its rights in Canada without having to rely on ancillary uses from the United States.

Third, the United States is not the sole venue to enforce trademark rights. In fact, the U.S. court system may not even be an option depending on the circumstances. For example, US-TANA could have perhaps sued CA-TANA in the United States, arguing that Canada borders the United States and that through CA-TANA's tana.live website, U.S. citizens might have been confused by CA-TANA's use of identical or similar marks. Nevertheless, it is not clear whether any potential confusion among U.S. citizens would have been sufficient to for a U.S. court to assert jurisdiction over CA-TANA if, among other things, its conduct was not specifically directed at the United States. In addition, U.S. courts are unlikely to award any damages originating from conduct in Canada in light of the U.S. Supreme Court's recent decision in Abitron v. Hetronic (which you can read about here).

In any event, the decision by the Canadian Federal Court is a good reminder that U.S. trademark owners should not forget about "the True North strong and free" when they are registering, using, and protecting their trademarks.

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.

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