US, Canada and other international registrations

Before applying to register a trade mark, searches are usually undertaken in order to find out whether there are any identical or similar applications that may prevent you from obtaining a successful registration. In the main, searches cost less than filing an application and getting it right first time helps prevent wasted money on fees for unsuccessful applications.

While Trade Mark Direct offers free searches in the UK and of the EU’s Community Trade Mark registers, if you want to register your trade mark individually in specific countries other than the UK, searches of the national databases incur additional charges per national register.

Case study – Trade Mark Direct survey finds SMEs failing to plan for international growth.

Did you know that up to two-thirds of growing British businesses are failing to plan ahead for international expansion by failing to apply for trade marks outside countries in which they currently operate?

Trade Mark Direct has helped many clients register trade marks in the US and Canada. We provide more specific details about the registration process in these countries below – please contact us for the most up to date cost estimate ([email protected]):

United States

Clearance searches and advice on registrability for a word mark/name (first 3 Classes included) – £175

Attorney trade mark filing (first 3 Classes included; based on previous UK/CTM) – £400

Using UK or EU appl/reg as home base (non-priority) – attorney charge per Class – £50

Registry fees – £255 for each class

Expenses (first Class) – £100

If basing the US application on actual Use in commerce or Intent-to-use, rather than an existing UK or CTM application/registration, then a Statement of Use will need to be filed and additional fees may apply.

Trade Mark Direct can either file your trade mark on the basis of current use in the USA or based on intention to use. If the mark is not yet in use in the US, you have six months from the time of registration to supply a specimen of use with an additional fee, which is dependent on the number of classes. If you do not have it in use by the end of six months, you can request more six-month extensions up to a total of three years, paying the same fee for each extension period.

The estimated costs listed above include our fees, official registry fees and associate fees for filing the applications and are subject to currency exchange rate fluctuations and official fee increases of the Trade Mark Offices of the countries concerned. The above estimated costs are exclusive of VAT.

Please be aware that additional costs may be incurred as applications progress; the level being dependent upon the nature of any objections raised or oppositions filed. We would charge these additional costs on a time basis. Our associates may charge an additional publication or processing fee, although such additional costs are usually minimal.

Please do not hesitate to contact us for a cost estimate.

Canada

Clearance searches and advice on registrability (word mark) – £550

Initial fees and disbursements for filing an application – £500

Registration fees (incl. fee if trade mark has not yet been used in Canada) – £1,060

Expenses – £100

Canada does not operate a class system. A trade mark application in Canada can be filed on the basis of any one of the following four options: 1. Use in Canada, 2. Intent to use in Canada, 3. Making known in Canada, 4. Use and registration abroad.

The Canadian process:

Once the registry recieves your trade mark application, your application receives a filing date and an application number before the Canadian Intellectual Property Office (CIPO) examines the application.

The examination procedure is as follows:

1. The CIPO searches the trade mark records to find any other trade-mark that may come into conflict with the one you’ve submitted. If one is found, you will be informed.

2. Your application is examined to ensure that it complies with the requirements of the Trade Mark Act and Regulations. You will be informed of requirements which are not met by the application. Additional costs will be incurred should the CIPO issue actions objecting to the registration of the trade mark application.

3. You will receive an examination report and any invoices are for reviewing and reporting the office actions: for example, where an examiner is asking that the term ‘dietary supplements’ be defined in ordinary commercial terms.

4. Once the examination stage has been completed, the mark is advertised in the Canadian Trade-marks Journal. Third parties have two months to oppose registration of the mark. If there is opposition, the Registrar of the Trade-marks Office will consider the evidence filed by either or both parties and decide whether or not to refuse your trademark application. In such a case, both parties are notified of the CIPO decision and reasons. Please note that additional costs will be incurred if this should occur.

5. If there is no opposition, the mark proceeds to registration upon the payment of the £190 registration fee and the filing of a Declaration of Use if required in the case of a proposed mark.You will be issued a trademark registration certificate.

The usual timespan from application to registration is 15 months to two years. It is not necessary to wait for registration before commencing use of the mark in Canada.