International Trademark Lawyer

Yes. Under the Paris Convention, a mark duly registered in one member country is independent of marks registered in the other member countries (art. 6(3)). The US and Canada are separate systems, and Europe has both the EU trademark and national filings. The Madrid System, administered by WIPO, allows you to file a single international application that designates multiple members. We recommend prioritizing the markets where you sell and where counterfeiting risk is highest rather than trying to cover every country at once.

Yes. I hold bar admissions in California, Ontario, and Quebec. I file with the USPTO in the United States and the CIPO in Canada; Canadian examiner's reports, oppositions, and section 45 proceedings are handled through a licensed Canadian trademark agent. For brands that operate across the border, that keeps the filing strategy consistent.

The Madrid Protocol is an international treaty administered by WIPO that allows trademark owners to file a single international application designating multiple Madrid System members. The application must be based on an application or registration at the office of a Madrid member where the applicant is a national, is domiciled, or has a real and effective industrial or commercial establishment. Coverage is not automatic: each designated office examines the application under its own law and can refuse it within the treaty time limits. We recommend comparing the cost of Madrid and direct national filing for each country before you choose.

Our legal fee for a straightforward single-class US application is $2,995 (Brand Locked), plus the USPTO base fee for an electronic application of US$350 per class (37 C.F.R. § 2.6(a)(1)(iii)) and any applicable surcharges; each additional class is $750. Canadian CIPO applications carry CIPO's own government fees. Madrid Protocol filings involve a WIPO basic fee plus fees for each designated member, which vary by member and number of classes; our Madrid tiers start at $4,495 (Madrid Foundation: three designations, one class), plus government fees. I quote a flat fee before any work begins.

Each country sets the conditions for filing and registering trademarks in its own legislation (Paris Convention, art. 6(1)). In Canada, for example, a registration is invalid if the application was filed in bad faith (Trademarks Act, s. 18(1)(e)). If a domain name is involved, the UDRP 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 ¶ 4(a)). Where a challenge is not available, we recommend assessing whether to enter the market under a different name.

The European Union Intellectual Property Office (EUIPO) administers the EU trademark (EUTM), a single registration that covers all 27 EU member states. You can file directly with the EUIPO or designate the EU through a Madrid Protocol filing. For European countries not covered by the EU trademark (Norway, Switzerland, UK post-Brexit), separate filings are required. UK trademark filings are handled through the UK Intellectual Property Office. I advise on EU and UK strategy as part of a broader international trademark plan.

Each country sets the conditions for filing and registering trademarks in its own legislation (Paris Convention, art. 6(1)). 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, so rights can exist through use without registration (15 U.S.C. § 1127). 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 (Trademarks Act, s. 16(1)), unless that trademark has been abandoned on the day the application is advertised (s. 16(3)). We recommend filing in your key markets before you launch publicly in those markets.

No. A USPTO registration is limited in scope to the United States. A Canadian registration issued by the CIPO is required to claim registered trademark rights in Canada. That said, if you can show that your US mark has become well-known in Canada through cross-border advertising, spillover reputation, or Canadian consumer recognition, Canadian law may provide some protection against confusing adoption of your mark by a Canadian party. This protection is more limited and harder to enforce than a direct registration.

The USPTO (United States Patent and Trademark Office) administers trademark registrations in the United States. The CIPO (Canadian Intellectual Property Office) administers trademark registrations in Canada. Both require separate applications with separate fees, class selections, examination processes, and filing timelines. The US system allows filing based on actual use or intent to use. The Canadian system places heavier weight on registration following 2019 amendments. The two systems are not interchangeable and do not recognize each other's registrations.

The timeline varies by country. A US application for the Principal Register filed with the USPTO is examined and, if approved, published for opposition before it can register. For fiscal year 2024–2025, Canada's CIPO published an average turnaround time of 34.5 months for trademark registrations. Madrid Protocol designations are examined by each country's national office under its own law, 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)). I provide timeline estimates for each target market before filing.