Seattle Trademark Lawyer

U.S. brand owners can now include Canada when seeking to replicate their trademark filings with the U.S. Patent and Trademark Office in foreign jurisdictions.

That’s right — effective June 17, Canada has joined the Madrid Protocol Treaty.

This is a great development for trademark owners. Previously, U.S.-based trademark owners with an active USPTO application or registration could economically apply to duplicate their filing in 118 other countries with a single application, including the EU, UK, China, Japan, South Korea, Australia, New Zealand, and Mexico. But — conspicuously — not Canada.

Happily, that’s changed. U.S.-based filers can now include Canada in their Madrid filings. This gives U.S. trademark owners an excellent opportunity to maximize their rights with the States’ second-largest trading partner.

There are a couple caveats worth noting, though they’re not special to Canada. If a Madrid filer’s USPTO application is denied or its registration is cancelled, the dependent Madrid applications will suffer the same fate. And if the Canadian Intellectual Property Office or third party objects to an application, trademark owners will still need to engage a Canadian trademark lawyer to respond.  

As part of joining the Treaty, Canada adopts the Nice Agreement classification of goods and services, which is in line with the USPTO’s classification scheme (and most other trademark offices). Registrations in Canada also will be good for ten years, rather than 15, as previously was the case.

Joining Madrid has been a years-long process. It’s great to finally welcome Canada to the club.

Fraudsters are branching out.

Instead of merely sending out fake invoices to unsuspecting trademark owners — a scourge in its own right — some are fraudulently changing owner information with the U.S. Patent and Trademark Office.

I recently noticed this with one of my client’s filings. Helpfully, the USPTO immediately changed the information back. It also told me:

“[U]nauthorized changes have been made to a number of active trademark applications and registrations. These changes may be part of a scheme to register the marks of others on third-party [fraudulent] ‘brand registries.’” 

The USPTO provides more information about this disturbing development here.

This is good reason to check your filings, or have your attorney do so. Even better — make sure your attorney has software that that alerts him or her to any changes that occur in your trademark filings. That will enable your lawyer to nip any unauthorized changes in the bud.