Several of my clients operate websites from which US residents can order their products. These clients have registered Canadian trade-marks, and sell their products world-wide over the Internet. A common question from these clients is “Can I get a US trademark despite the fact that I’m based here in Canada?” The answer is sometimes not an easy one.
For foreign entities to qualify for a US trademark, they must use their trademark “in commerce”. This generally means selling products directly to US residents, and the best way to do this is to have a US-based distributor of your products. However, if you are based in Canada or another foreign jurisdiction, and don’t have a US-based distributor, it can be difficult to prove that you are actually carrying on “use” in the US. The definition of “use in commerce” has been interpreted in several US cases, including some recent cases involving casinos in Monaco and The Bahamas. Unfortunately, the cases conflict in their rulings making a clear determination difficult at best. In one case, the US courts ruled that a foreign casino advertising in the US whose residents then travelled to Monaco to gamble was “use in commerce”. In the other case, the courts ruled that a foreign casino advertising in the US was not enough to establish a territoriality link to the US. These cases largely deal with advertising, but selling goods or wares is also uncertain.
To increase your chances that you may be able to file for a US registration, or to maintain one already registered, you should:
1. Keep track of all shipments, sales, and receipts to US customers
2. Keep track of all advertising done in the US, both in physical advertising or on websites
3. For Internet-based companies, ensure that your website contains “ordering information”, and not just a phone number. In other words, make it clear that by contacting you, orders can be made immediately over the phone. Better yet – maintain an actual page where you can order goods online.
4. Make it known that your goods and services are available to US customers and include prices in US dollars (easy to do with a small money converter).
For more detailed advice or information, contact me.