QUESTION
Is a Canadian Trademark violating my USA Trademark?
Asked on Jan 21st, 2016 on Intellectual Property - Oregon
More details to this question:
I live in the USA and have a US Trademark (I will keep the Trademark name confidential). There is a Canadian Company that has the same Trademark name (and is ONLY registered in Canada). But this Canadian company ships over 50,000 packages from Canada to USA customers with this Trademark name (Doing the same kind of packages I ship in the USA- even though they have been in business longer). Can I execute a cease and desist and possibly work out a royalty licensing fee if they wish to continue shipping in the USA? Or can I do nothing?
1 ANSWER
Canadian rights are only valid for Canada and US rights are only valid for the US. Thus, you could not use your trademark in Canada and the other company cannot use its in the US. However, rights in the US are based on use, not registration and while you indicate that the other company has been in business longer, you have not indicated whether they have been shipping to the US longer than you have been using your mark. Assuming from the fact that the other company is using your packaging that you started in the US before them, then you could send them a cease and desist. In fact if the packaging is confusingly similar to yours, you might have a claim for unfair business practices and possibly counterfeiting in addition to trademark infringement. More facts are needed to provide a definitive answer and I suggest you contact a trademark attorney to fully evaluate your situation since it exceeds the scope of free service provided by this site.
Answered on Jan 22nd, 2016 at 6:03 AM