International Trademark Attorney

Yes. Trademark rights are territorial — a US registration covers the United States and does not extend to Canada, the EU, or any other jurisdiction. Registered rights in another country come from a registration in that country or a designation through an international system like the Madrid Protocol. We recommend planning the filing sequence early.

The Madrid Protocol is an international treaty administered by WIPO that allows trademark owners to file a single international application designating any of its members, which cover 133 countries (WIPO, 2026). You need a basic application or registration at the office of a Madrid member where you are a national, are domiciled, or have a real and effective industrial or commercial establishment. The international application is filed through that office and extends to each designated member, where local examination rules apply.

Yes. I hold bar admissions in California, Ontario, and Quebec. I file USPTO and CIPO applications; Canadian examiner's reports, oppositions, and section 45 proceedings are handled through a licensed Canadian trademark agent. The two systems operate independently.

Costs vary significantly by jurisdiction. USPTO base fees for electronic applications under Sections 1 and 44 are US$350 per class. In Canada, CIPO's current filing fees depend on the number of classes and how the application is submitted. A Madrid Protocol application through WIPO has a base fee plus per-country designation fees, which vary by jurisdiction. I provide a flat-fee quote for each country and a total estimate before any filing begins. Additional government fees may apply. The US designation fee under Madrid is US$600 per class, separate from other WIPO charges.

Each country sets the conditions for filing and registering trademarks in its own legislation (Paris Convention, art. 6(1)), including how filing dates and earlier use affect priority. In Canada, an applicant is not entitled to register a trademark that, at the earlier of its filing date and its date of first use in Canada, was confusing with a trademark previously used or made known in Canada by another person or with one in an application previously filed in Canada by another person (Trademarks Act, s. 16(1)), unless, on the day the application is advertised, the earlier application is no longer pending or the earlier trademark has been abandoned (s. 16(2) and (3)). We recommend filing early in each market where you plan to sell.

A trademark squatter is a party that registers another's brand name in a market before the brand owner enters it. Responses can include a cancellation or invalidation proceeding where local law provides one (in Canada, for example, a registration is invalid if the application was filed in bad faith, Trademarks Act, s. 18(1)(e)), negotiated coexistence, or purchase. We assess each option under the law of the country concerned.

In the US, the Lanham Act defines a trademark to include any word, name, symbol, or device used by a person to identify and distinguish their goods; registration is not required for a mark to qualify (15 U.S.C. § 1127). In Canada, subject to sections 21, 32, and 67 of the Trademarks Act, registration gives the owner, unless it is shown to be invalid, the exclusive right to use the trademark throughout Canada for the registered goods or services (s. 19), and section 7(b) prohibits directing public attention to one's goods, services, or business in a way likely to cause confusion in Canada with another's. Canadian applications may be filed in English or French; a bilingual goods-and-services description is not required. Examination timelines differ: the USPTO publishes current processing times; CIPO publishes its own timelines.

Timelines vary by country. At the USPTO, an application for the Principal Register is examined and, if approved, published for opposition before it can register. For fiscal year 2024–2025, CIPO published an average turnaround time of 34.5 months for trademark registrations. A Madrid Protocol designation is examined under the domestic law of each designated country, and an office that wishes to refuse protection must notify WIPO of the refusal, with all its grounds, within one year from the date WIPO sent it notice of the designation, or within 18 months where the designated member has made the declaration allowing it; a member that has also so declared may notify an opposition-based refusal after the 18 months only if it told WIPO of possible later oppositions before the 18 months ran out and notifies the refusal within one month after the opposition period ends and no later than seven months after that period begins (Madrid Protocol, art. 5(2)).

Trademark protection is territorial: a mark registered in one country is independent of marks registered in other countries (Paris Convention, art. 6(3)). I advise on enforcement matters in the US and Canada. For other jurisdictions, I coordinate with trusted local trademark attorneys in the relevant markets. For domain names, the UDRP is incorporated into the domain's registration agreement and provides a mandatory administrative proceeding in which the complainant must prove that the domain name is identical or confusingly similar to a mark in which it has rights, that the registrant has no rights or legitimate interests in it, and that it has been registered and is being used in bad faith (UDRP ¶¶ 1, 4(a)).

On public signs and posters and in commercial advertising in Quebec, a trademark may appear, even partially, only in a language other than French if it is registered under the Trademarks Act and no corresponding French version appears in the register (Charter of the French Language, s. 58.1); the Regulation respecting the language of commerce and business extends this to other trademarks recognized within the meaning of that Act (s. 25.1). On public signs visible from outside premises, French must be markedly predominant when such a mark appears there in another language, and the display must be accompanied by French terms, such as a generic term or a description of the relevant goods or services, or a slogan (Regulation, s. 27.7). For businesses entering the Quebec market, this is a compliance consideration alongside the CIPO filing, not instead of it.