From Filing to French:
Navigating North American Trademarks

Your Trademark Strategy Needs a Local Lens

Whether you're expanding a brand or managing client portfolios across borders, understanding the key differences between U.S. and Canadian trademark systems is essential. While both countries are first-to-use jurisdictions, their rules diverge in meaningful ways—especially when it comes to use requirements, examination standards, bilingual considerations, and procedural options. This guide helps you file smarter, respond faster, and protect more confidently across both jurisdictions.

Not having a jurisdiction-specific strategy can stall your application, limit your protection, or increase costs down the line. Subtle differences—like how distinctiveness is assessed or when “use” must be proven—can create hurdles if overlooked. Getting the strategy right from the start protects more than your mark; it protects your growth plan.

Executive Summary

Trademark prosecution in North America involves two neighbouring systems that share similarities but differ in key ways. Both Canada and the U.S. are first-to-use countries and will refuse trademarks if there are prior confusingly similar filings or registrations. However, important differences remain: the U.S. requires proof before the USPTO of “use in commerce” and offers procedural options like the Supplemental Register for trademarks that might otherwise be refused. Canada, by contrast, imposes bilingual requirements, grants broad protection for official marks, and may refuse trademarks for lacking inherent distinctiveness even if they are not merely descriptive. These are just some of the nuances applicants must navigate.

This guide outlines key aspects of trademark law and prosecution in both the United States and Canada. Whether you’re filing directly or coordinating multi-jurisdictional protection, understanding these differences is essential to navigating the North American IP ecosystem effectively.

Who Should Read this Guide?

This resource is designed for:

→ International trademark agents and filing partners looking for a trusted Canadian and U.S. partner who understands the nuance of cross-border filings.

→ Canadian and U.S. business owners aiming to expand their brand protection across the border with confidence and clarity.

→ First-time filers navigating the U.S. or Canadian trademark systems and seeking practical guidance to get it right from the start.

About the Author

Kim Capiau is a Registered Canadian Trademark Agent and IP strategist at Stratford. Since 2018, she’s helped clients—from startups to multinationals—secure and manage trademarks in Canada and the US. Kim brings deep expertise in trademark prosecution, IP analytics, and strategic portfolio development. She has been instrumental in building Stratford’s trademark agency and has earned recognition for her thought leadership through speaking engagements and contributions to educational IP resources. Kim is known for her pragmatic, client-focused approach and deep understanding of Canada’s evolving IP landscape.

2. Official Marks enjoy broad protection

Official marks are a special category of trademark protection in Canada, available only to public authorities, government bodies, and universities. They differ significantly from regular trademarks in that they don’t expire, don’t require distinctiveness, and apply across all goods and services, regardless of industry or classification.

3. Trademarks must be distinctive

Under Canada's Trademarks Act, trademarks must be “inherently distinctive” to qualify for registration. If the mark is considered to be too generic, descriptive, or personal (e.g. a surname), the examiner may raise objections that the trademark is not inherently distinctive.

Examples of goods and services that are not deemed to be inherently distinctive are in CIPO’s examination manual. A few of those are trademarks providing general information about the goods and services, single letter or number marks, exclusive laudatory trademarks and trademarks consisting of numerical phone numbers.

4. French language laws apply in Quebec

Amendments to Quebec’s Charter of the French Language will come into effect on June 1st, 2025, affecting how trademarks are used and displayed within the province. These changes aim to reinforce the prominence of the French language in commercial activities.​

5. Abandonment is final (for the most part)

Once a trademark is abandoned due to failure to respond to an examiners report, the trademark will receive a “Notice of Default”. The applicant will then have 2 months dating from this notice to remedy the default by filing a response. After that? There is no guaranteed path to reinstatement under Canadian law.

2. Use is also required to maintain registered trademarks

To maintain a U.S. trademarks registration, owners must regularly prove that the mark is still in use.

To keep a trademark registration alive, the trademark owner must periodically file specific maintenance documents with the USPTO that prove ongoing use, Between the fifth and sixth year after registration, a Declaration of Use (or Excusable Non-Use) must be filed. Failure to do so will result in cancellation of the registration.

Every 10 years, the registration must be renewed. This is filed in combination with a Declaration of Continued Use (or Excusable Non-Use) to show the mark is still in use and the owner wants to keep the registration active.

3. Claiming priority on foreign applications? Timing matters

4. Complicated trademark applications pay higher fees

As of January 18th 2025, the USPTO has implemented a new fee structure that increases the cost of trademark applications, including renewals, filing of a statement, or declaration of use. The base filing fee is $350USD per class. There is a fee of $200USD per class if the description of the goods and services are not selected from the USPTO pre-approved ID manual. On top of that, if the description of goods and services exceeds 1000 characters, an additional $200USD/class will be applied.

5. There is a Supplementary Register for descriptive trademarks

The US maintains two trademark registers: the Principal Register, which is for marks that are inherently distinctive or have acquired distinctiveness (secondary meaning), and the Supplemental Register, which is for marks that are not yet eligible for the Principal Register, usually due to being descriptive.

Applicants can amend their applications to the Supplemental Register if the USPTO refuses registration on the Principal Register due to lack of distinctiveness, namely if the mark is merely descriptive.