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Executive Summaries Mar 4, 2021

What if Protecting your Trademark Became Easier in the United States?

Your trademark is unavailable in the United States because someone else has already registered a similar trademark? Overcoming this hurdle may be easier than you think!

By the end of 2021, it will be possible to institute proceedings to expunge a registered trademark that is not used by its owner on the market with all or some of the goods and services concerned, as it is the case in Canada.

Therefore, two options are available to you depending on the type of trademark registration:

  • If the trademark has been registered based on use of the mark in the United States, an expungement proceeding may be instituted as soon as the trademark is registered and up to its fifth anniversary.
  • If the trademark has been registered based on a foreign or international registration, you will have to wait until it has been registered for at least three years but proceed before it has been registered for 10 years.

The Registrar may also undertake such a procedure on his own initiative.

In addition, the U.S. Registrar has stricter rules regarding the proof of use to be provided for a registered trademark, including an audit system. This should help eliminate many unused trademarks.

At the moment, a trademark registered in the United States can be cancelled only if it can be shown that it has not been used for three years and that its owner intended to abandon it. The latter requirement makes it particularly difficult to succeed with this type of proceeding.

We enthusiastically welcome these future changes making the trademark registration expungement process simpler, faster and more efficient, and therefore less expensive.

On the other hand, if you already own trademarks in the United States, ensuring that they are used in connection with all the products and services listed in their registrations will become crucial. Failure to do so could expose your trademarks to expungement proceedings initiated by a third party.

In preparation for these upcoming changes, we recommend that you strengthen the use of your brands in the United States and continue to develop your plans in this market.

We can help you in this regard. For more information, contact our trademark team who will be pleased to assist you with your trademark needs in Canada, in the United States and globally.

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