When thinking about registering a trademark, the two things everyone asks are how much (does it cost?) and how long (will it take)?
If you are selling products or services only in Canada you have no choice but to register through the Canadian Intellectual Property Office (CIPO). You are subject to CIPO’s fees and timelines.
But what if you sell your product or services in several countries around the world, perhaps through distributors, agents or directly off your website? You may want an “international registration” to protect your brand in the locations where you do business.
It’s been nearly a year since Canada joined the Madrid Protocol. This gives trademark owners the option of filing a single application for international registration with the World Intellectual Property Organization (WIPO) and subsequently designating other member states like the USA, China, the EU or Australia to obtain trademark protection in those countries.
How is that working out for us? Is Canada a good jumping off point for an international application? Or should Canadian businesses really be thinking about spring-boarding their international registrations from the USA?
An international application using WIPO must be filed through an “Office of Origin”. This is the trademark office that is a member of the Madrid Protocol and can receive and certify an application for the international registration of a trademark. In Canada, this office is CIPO. In the United States, this office is the USPTO.
Should Canadian businesses consider the USPTO as their Office of Origin? If time is not a consideration, then you could stick with CIPO. But if time is an issue, then you will want to read further and consider the USPTO as an option for your Office of Origin.
Let’s get back to the initial questions asked at the top of this blog:
How much does it cost?:
- In Canada, the CIPO application fees are $330 CAD for the first “international class” of goods or services applied for, and $100 CAD for each subsequent class.
- In the USA, the USPTO application fees are $275 USD or $225 USD per class, depending on the filing basis.
How long does it take?
Here is where there is a big difference:
- In Canada, it takes between 14-18 months before an Examiner is even appointed to the file!
- In the USA, while we generally advise clients it takes 3-4 months for the USPTO to appoint an Examiner, the current service standard is under 3 months!
With costs being nearly equal between Canada and the USA, time becomes a major factor if quicker international registration is desired. Overall, it takes on average nearly twice as long from filing an application to registration of the mark for Canada compared to the USA.
If you know that an Examiner can be appointed on your file in under 3 months (in the case of a USPTO application) and your mark could be advertised and registered in as little as 6-8 months, that may be a powerful incentive to pursue a US registration. Then, the US registration could be used to springboard an international registration via WIPO.
What’s the Catch?
The saying goes, “If something sounds too good to be true, there must be a catch!”
Yes, there is a catch. But the solution is simple.
As of August 3, 2019, the USPTO requires foreign-domiciled owners /holders to have a U.S.-licensed attorney represent them before the USPTO in any application or registration-related filing. While Canadian lawyers can still make representations on behalf of an applicant, they must ensure that an authorized U.S.-licensed attorney has been appointed to represent the trademark owner.
What’s the Solution?
Mills & Mills LLP can help with your US and International Trademark filings. As a member in good standing of the New York Bar since 1997, and the Law Society of Ontario since 1993, Taras Kulish has prosecuted and registered numerous Canadian, US and International trademark applications. Taras would be pleased to discuss your trademark and branding strategies in Canada, the USA and worldwide. Referrals are welcome and client relations will be protected.
Our lawyers regularly help clients with a wide range of legal matters including business law, family law, real estate law, estate law, employment law, health law, and tax law. For over 130 years, we have earned a reputation amongst our peers and clients for quality of service and breadth of knowledge. Contact us online or at (416) 863-0125.
 Trademark Now: “Essential Timing: Assessing international trademark application processing times” available online: https://www.trademarknow.com/trademark-application-processing-times-2018