Trademark Registration: CIPO, USPTO, and International Systems

Canadian Intellectual Property Office (CIPO)

The process starts with a proposed use declaration, indicating that the trademark is being used. The status changes from 'Pending' to 'Registered Trademark' after a notice of allowance, typically 10-14 months after filing, provided there are no oppositions.

A trademark examiner approves the application for publication in the trademark journal. Within two months of publication, third parties can oppose the trademark.

United States Patent and Trademark Office (USPTO)

The Trademark Electronic Search System (TESS) is used for searches.

Form #11 in the USPTO filing process relates to the Madrid Protocol.

Serial Number/Registration number are key identifiers.

Trademark Trolls

Trademarks can be protected through registration and unfair competition laws.

A trademark needs to be distinctive.

International Trademark Organizations

• OHIM (Office for Harmonisation in the Internal Market)
• WIPO (World Intellectual Property Organization)
• WTO (World Trade Organization)

Nigeria follows common law, with the first case of passing off dating back to 1863.

Brand loyalty is the primary goal of trademark protection.

Community Trade Mark (CTM)

A CTM is a unitary trademark right covering the entire EU. It is obtained by filing a single application with the Office of Harmonization in the Internal Market (Trademarks and Designs) (OHIM) in Alicante, Spain. A US entity can secure protection across the EU through this process.

The initial 15 EU members included Austria, Belgium, Denmark, Finland, France, Germany, Greece, Italy, Ireland, Luxembourg, the Netherlands, Portugal, Spain, Sweden, and the United Kingdom.

As the EU expands, existing CTMs of the U.S. will automatically extend to cover new member states at no extra cost.

The official languages are German, Spanish, French, Italian, and English.

OHIM does not cite potentially conflicting marks as a bar to registration. Owners of older rights must monitor and enforce their rights against junior CTMs.

A single fee renews the CTM for all EU countries.

International Registration (IR)

IR is not always advantageous. A 'central attack' rejection can cause a domino effect. Many of the largest US trading partners, such as Canada, Mexico, and Latin America, are not members of the Madrid Protocol. This means there is no protection in some countries of great interest to many US companies.