trademark similiarity - US and Canada - infringement?

[cjohn]

What is the name of your state (only U.S. law)? Canada



Hello,

I live in Canada and I am thinking about opening a business in Canada but want to make sure that there are no trademark issues with a similar business in the US. I will give an example but lets say I wanted to start a waffle business and call it "Squaredwaffles". Is it trademark infringement if there is a business that sells waffles in California that is called "X-squaredwaffles"?

Thanks

 

[FlyingRon]

If you do business in the US it can certainly be a problem.

Whether it is a problem in Canada remains outside the scope of this forum until we annex Canada into the US.

 

[quincy]

What is the name of your state (only U.S. law)? Canada



Hello,

I live in Canada and I am thinking about opening a business in Canada but want to make sure that there are no trademark issues with a similar business in the US. I will give an example but lets say I wanted to start a waffle business and call it "Squaredwaffles". Is it trademark infringement if there is a business that sells waffles in California that is called "X-squaredwaffles"?

Thanks

Unless a similar US business with the same or similar name as you intend to use does business in Canada or has registered their trademark in Canada, or you intend to expand your business into the US under a name that is shared or is similar to a US business, you should not have trademark issues.

Once you establish your business under your identifying trademark, you can prevent any business from another country from operating in your area under the same or similar trademark, even if the business has established rights to the name in their own country. This is assuming the name you choose is not famous worldwide, because that can cause some problems.

The United States Patent and Trademark Office does allow for international registration of trademarks, so you will want to check the USPTO as well as your Canadian registry.

USPTO: http://www.uspto.gov

CIPO: http://www.cipo.ic.gc.ca/tm

Because you will be investing a lot of time and money introducing your business to consumers, it can be smart and it is advised that you go over your trademark and your business plans with an IP attorney in your area. Good luck.

 

[cjohn]

I dont intend on opening the business in the US. Its seems the existing business in the US is only operating in California ( they have a few locations). If I register my business here in canada as "squaredwaffles" and the existing business in the us "x-squaredwaffles" decides to expand into canada, could they cause legal problems for me? maybe because they registered theirs first?

Thanks again for the help

 

[quincy]

I dont intend on opening the business in the US. Its seems the existing business in the US is only operating in California ( they have a few locations). If I register my business here in canada as "squaredwaffles" and the existing business in the us "x-squaredwaffles" decides to expand into canada, could they cause legal problems for me? maybe because they registered theirs first?

Thanks again for the help

You will want to register your trademark in Canada to prevent a US company coming in and registering the name first.

In the US, trademarks gain their trademark rights from use and not from registration of the mark. The first to use a trademark in commerce, therefore, can exercise their rights in a mark and oppose the use or registration of anyone who tries to use the same or similar name as an identifier on the same or similar goods or services. In order to register a trademark in the US, the mark must have first been used in commerce.

Canada has made some rather significant changes to their trademark laws in the last year or so, though, and these will be important for you to review with an IP attorney in Canada. The use of the mark is not a prerequisite to filing for registration in Canada now. It is also the first to register a mark (or "sign") who is the presumed owner of the trademark, putting Canada in line with many of the other countries in the world.

In other words, the differences between US trademark laws and Canadian trademark laws have perhaps increased a bit, so you will want to consult with an IP attorney in your area of Canada to discuss not only the particular trademark you have chosen, but also your business plans. You definitely do not want to start your business off with an infringement suit.