Canadian trade-mark owners can register their marks in the United States, through the USPTO . It’s important to remember that, as a Canadian business, registration of your mark in Canada does not afford any protection or trade-mark rights in the US, so a separate US application must be filed.  After application and registration of your mark, a declaration is required at the 5-year mark. This is known as a Section 8 & 15 combined declaration, which requires the trade-mark owner to file specimens to show that the mark has been used in the US. Here’s a tip: When preparing your initial trade-mark application and designing packaging and labelling for the products, it’s important to keep in mind the eventual requirement to file specimens of use, to ensure that the specimens of the mark-as-used will show use of the mark-as-registered.

Consider the case of the TTAB decision in In re E.A. Sween Company, where the applicant registered the mark DELI EXPRESS SAN LUIS for sweet rolls (shown at left). However, the specimen of use showed use of the DELI EXPRESS mark as a visually distinct mark in red, in the top left corner of the package label, and the words SAN LUIS to the right, separated spatially in such a way that the TTAB concluded that the two marks conveyed “two separate commercial impressions.” Thus, the applicant’s drawing of the mark as registered was not considered a “substantially exact representation” of the mark as used in commerce.

Contact Field Law for assistance with screening, filing and registering US trade-marks.

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