Expand Your Brand Into the U.S.

This article originally appeared in the October 1, 2004, issue of The Lawyers Weekly.

Imagine a toy company in Toronto gearing up to globally market a mechanical marvel by Christmas. At the same time, a hotel in Montreal is readying a new Web site that is expected to be viewed by prospective American revelers planning their New Year's Eve celebrations. Across the country, in Vancouver, a clothing manufacturer has grand plans to set a fashion trend next fall with its new line of clothing and accessories. All three Canadian companies have their eyes set on selling and advertising their goods and services in the United States and expanding their brands across international borders.

Central to brand expansion into the United States is the strategic development of a strong trademark/service mark portfolio that sufficiently protects the source identity of a company's important intellectual property assets. Building such a portfolio in the United States carries significant benefits for Canadian companies. Competitors are likely to keep a close watch on marks used (or anticipated to be used) in a particular industry. Inclusion of a company's marks in a government database accessible by anyone worldwide at USPTO.GOV should send a strong signal to competitors to avoid choosing a similar brand name that is likely to cause confusion in the marketplace. This advantage starts several weeks after filing an application as records of newly filed trademark and service mark applications are constantly added to the database at USPTO.GOV. Other benefits of registering marks with the United States Patent and Trademark Office include (1) nationwide trademark and service mark priority rights, (2) presumption of validity and exclusive rights to use the mark in the United States, (3) availability of "incontestable" status after five years of continuous use (a type of immunity from many types of challenges that can be filed by third parties against the registration), (4) reliance by the USPTO upon a federal registration in rejecting a third party's application that is confusingly similar, (5) ability to use the registration symbol, "", to give nationwide notice of trademark rights, (6) potential availability of recovering treble damages and attorneys' fees in an infringement proceeding, and (7) ability to block the importation of infringing goods through the assistance of the U.S. Customs Service by recording the trademark registration details.

Before rolling out new...