Trademark Registration US and Canada

[MWZeart]

Hey folks,

Just wondering if anyone has much experience of registering TMs in these jurisdictions?

I believe there are two possible routes:

WIPO
US Attorney

Is one better than the other? Do you also require an attorney for Canadian registration?

Thanks.

 

[Hughj11]

Hey!

I haven't filed myself in the US or Canada but I have worked with a few US/Canadian TM attorneys.

For either route, you will more likely than not have to have a representative in both the US & Canada, the reason is that in the case of office actions, you will need a representative to file a response on your behalf, even if you go through WIPO.

For Canada, I don't think having a local attorney is required (unlike the US where unless you are domiciled there, you must have a US attorney).

I don't think WIPO is the route to go unless you are also registering in multiple other countries, as the fees for filing are relatively high.

 

[MWZeart]

Hey!

I haven't filed myself in the US or Canada but I have worked with a few US/Canadian TM attorneys.

For either route, you will more likely than not have to have a representative in both the US & Canada, the reason is that in the case of office actions, you will need a representative to file a response on your behalf, even if you go through WIPO.

For Canada, I don't think having a local attorney is required (unlike the US where unless you are domiciled there, you must have a US attorney).

I don't think WIPO is the route to go unless you are also registering in multiple other countries, as the fees for filing are relatively high.

Thanks for the info.

Just looked on WIPO and it's almost 20k for the application. Madness.

Looks like we'll have to find a US Attorney and investigate a little further as to how Canada works.

 

[Mister B]

We're registered in the US and we used the services of Josh Gerben, at www.gerbenlaw.com

Would heartily recommend them.