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. Each country where your brand operates requires a separate national registration, or a designation through an international system like the Madrid Protocol. Planning the filing sequence early is far less expensive than addressing conflicts after a foreign market opens.

The Madrid Protocol is an international treaty administered by WIPO that allows trademark owners to file a single international application designating up to 130 member countries. You need a home-country registration or application as the base. The international application is filed through your national trademark office and extends to each designated country, where local examination rules apply. It is typically less expensive than filing separately in each country.

Yes. I hold bar admissions in California and in Ontario, which means I handle USPTO and CIPO applications directly, without referral. For most international trademark attorneys, the Canada-US border is a referral boundary. For my clients, it is not. The two systems operate independently but are managed from the same office.

Costs vary significantly by jurisdiction. In the US, USPTO filing fees are $250 to $350 per class. In Canada, CIPO fees start at CAD $336 per class. 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.

In a first-to-file system, trademark rights go to the party who files the application first, regardless of who used the mark first. Canada and most countries outside the US operate on a first-to-file basis. This makes early international filing strategically important: a competitor who files on your brand name in a first-to-file jurisdiction before you do can acquire prior rights in that market even if you have used the mark elsewhere for years.

A trademark squatter is a party that registers a well-known foreign brand name in a local market, typically in a first-to-file jurisdiction, before the brand enters that market. The goal is usually to demand payment or block the brand's entry. Options include cancellation proceedings on grounds of bad faith, negotiated coexistence, or outright purchase. The viability of each option depends on the jurisdiction and how long the squatter has held the registration.

In the US, trademark rights arise from use in commerce — registration strengthens those rights but is not required to own them. In Canada, registration is the primary basis for trademark rights, which makes early filing more strategically important. Canadian applications also require a bilingual description of goods and services. Examination timelines differ: the USPTO takes 8 to 14 months; CIPO takes 18 to 24 months.

Timelines vary by country. The USPTO takes 8 to 14 months for a straightforward application. CIPO takes 18 to 24 months. A Madrid Protocol designation is subject to the national law of each designated country — most issue a decision within 12 to 18 months. EU trademark registration through the EUIPO typically takes 4 to 6 months.

Enforcement requires rights in each jurisdiction where infringement occurs. I handle enforcement in the US and Canada directly. For other jurisdictions, I coordinate with trusted local trademark attorneys in the relevant markets. UDRP arbitration for domain disputes is jurisdiction-independent and can be filed for any domain registered in bad faith using your brand.

Quebec's Charter of the French Language requires that trademarked words used publicly in Quebec be accompanied by a French generic term or description where the trademark is not in French. This does not affect the trademark registration itself, but it affects how the mark can be displayed on signage and in advertising within Quebec. For businesses entering the Quebec market, this is a compliance consideration alongside the CIPO filing, not instead of it.