Will My Canadian Trademark Protect Me in the U.S.


In this video you will learn whether your Canadian trademark will protect you in the U.S. (or other countries) and how to use the Paris Convention to your advantage.





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TRANSCRIPT

DAVE: Thank you for coming out.

NARRATOR: Dave is a rockstar. He is the founder of a rock band IRON SUSPENDERS that is quickly gaining popularity around the world. He wants to trademark the name of the band but wants to find out how far the protection will take him.

DAVE: How did you like the concert?

TRADEMARK FACTORY: It was great. Looks like you are getting a lot of traction with your music.

DAVE: Yeah, our new record is going gold.

TRADEMARK FACTORY: You must be very proud. So how can I help?

DAVE: I know we want to protect our brand. What I was wondering is whether registering it as a trademark in Canada would protect us anywhere else?

TRADEMARK FACTORY: With very few exceptions that you should not rely on, the answer is no. Trademark protection is national, which means that you are only protected in the country where the trademark is registered.

DAVE: But didn't you say that the protection is Federal?

TRADEMARK FACTORY: Exactly. Your Canadian registration protects you everywhere in Canada, but not outside Canada.

DAVE: So how do we protect the brand in the States?

TRADEMARK FACTORY: You would need to file a separate trademark application with US Trademark Office.

DAVE: Oh.

TRADEMARK FACTORY: Good news is that Canada is a party to the Paris Convention that gives you a 6-months grace period. Here's how it works.

TRADEMARK FACTORY: Let's say you file your application in Canada on May 1, 2014.

TRADEMARK FACTORY: Someone else, let's call him Richard, files an application for the same name in the U.S. on August 12, 2014.

TRADEMARK FACTORY: You have until November 1, 2014 to file your applications in any other countries, and such future applications will prevail over applications for confusingly similar marks filed by anyone else.

TRADEMARK FACTORY: So if you file your application in the U.S. BEFORE November 1, 2014, then Richard's trademark application will be refused, because you can claim the date back to the date of your Canadian application.

DAVE: There ya go!

TRADEMARK FACTORY: However, if you DON’T file your application in the U.S. by November 1, 2014, then Richard's trademark application will be approved, and will prevent you from registering your trademark in the U.S.

DAVE: We better get my applications filed soon then.

TRADEMARK FACTORY: We're ready when you are. And don't forget to watch our video about international trademark applications! It may be very useful!

DAVE: I sure will.


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Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.

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